Trademarks: Unique does not mean distinctive!

Simply because your trademark or logo has not been registered before or is unique does not automatically make it distinctive and capable of guaranteeing the commercial origin of the mark.

 

As determined in the recent decision by the EUIPO Board of Appeal, the Board held that a mark comprising of a sequence of numbers from 0 to 23 could not be registered as an EU trademark as they lacked distinctiveness.

 

Case Summary:

 

The mark in question concerned Maison Margiela’s Magic Numbers. The Parisian haute couture house applied to register the figurative mark in September 2021 but was refused but the EUIPO examiner in its entirety, maintaining that the application lacked distinctive character pursuant to Article 7(1)(B) EUTMR, as the average consumer would perceive the mark as a listing a product number of a good sold by the applicant, and not as something guaranteeing the commercial origin of the mark.

 

 

Maison Margiela appealed to the board of appeals arguing that based on case law, figurative marks consisting of a list of numbers, based on past registered marks, can be registered. The fact that the relevant consumers are not used to seeing a long sequence of numbers is not a reason to support the view that the sign applied for is not perceived as a badge of origin. On the contrary, this argument should be in favour of distinctiveness.

 

Board’s decision:

 

The board held that the sequence of numbers, in three lines, when applied to the goods and services for which protection was sought would not be conceived as a distinctive sign by the public, rather it would be conceived as a non-distinctive sequence of numbers.

 

It was therefore irrelevant that the sequence of numbers was not a registered trademark or that the public had not seen a similar sequence used in this manner previously could not be an argument for distinctiveness. Moreover, the public was used to seeing long sequences of numbers, on invoices, barcodes and reference numbers, and would therefore not view the sequence by Maison Margiela as the undertaking for providing services.

 

For these reasons, and pursuant to Article 7(1)(b) EUTMR, the application for the sign was thereby rejected for all the goods and services claims.

 

Comments:

 

It is therefore essential for applicants to not automatically assume that their application will be accepted on the basis that the trademark is not currently registered or the word or logo is not currently used by anyone else in the course of trade.

 

At Patent Protect, we undertake an extensive registerability search before filing your trademark application so you can make an informed decision if you wish to proceed, which includes identifying any potential risks of objection by the UKIPO, or of any oppositions by 3rd parties. We also advise on future-proofing your trademark and brand, by suggesting amendments to your application which will serve you in the future.

 

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