Applicant's Mark

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The EU General Court has rejected the registration of a bodybuilder logo mark on the grounds that it is descriptive.

Universal Protein Supplements Corp, a US-based manufacturer of bodybuilding and sports nutrition supplements, filed an EUTM application for the figurative mark shown above, in relation to nutritional supplements (in class 5), clothing and footwear (in class 25), and online retail store services for those products (in class 35).

The Examiner rejected the application under articles 7(1)(c) (descriptiveness) and 7(1)(b) (non-distinctiveness). The Fifth Board of Appeal dismissed Universal’s appeal. On further appeal by Universal, the General Court upheld the decision on the following basis:

The relevant public for the goods and services consisted of average consumers, deemed to be reasonably well informed, observant and circumspect. Further, since the mark was strictly figurative without any verbal element, the registrability of the mark had to be assessed in the light of the public throughout the EU.

The mark consisted of a black silhouette of a person adopting a typical bodybuilding pose, displaying his muscles. The relevant public would therefore perceive it as the representation of a bodybuilder and the message it conveyed related to bodybuilding.

Nutritional supplements (in class 5) help, in particular, to build muscles and are part of the diet of bodybuilders, who can purchase them in shops specialising in sports equipment. The mark was therefore descriptive of those goods. Clothing and footwear (in class 25) include clothing items and shoes specifically designed for bodybuilding and the mark was therefore also descriptive of those goods. The same considerations applied to the relevant retail services (in class 35) to the extent that they relate to the sale of those goods.

It was common knowledge that drawings and photos of bodybuilders are often reproduced on products and advertisements to indicate the intended purpose of the relevant goods and services – all relating, in particular, to the practice of bodybuilding. The mark therefore showed a sufficiently direct and specific relationship to those goods and services enabling the relevant public immediately to perceive their nature and intended purpose. Even if the categories of goods and services at issue could also include goods and services with no link to bodybuilding, the finding of the descriptive character of the mark applied not only to the goods and services for which it was directly descriptive but also to the broader categories to which those goods and services belong – in the absence of a suitable restriction of the list of goods and services by Universal.

The Court rejected Universal’s argument that the choice to stylise the image of a bodybuilder by representing it with the shape of a silhouette prevented it from being exclusively descriptive. The silhouette did not amount to a particularly stylised form of representation, and indeed it represented a bodybuilder in a fairly realistic way. No detail or characteristic went beyond the standard representation of a bodybuilder. The artistic and creative choices, pose and specific proportions of the mark were merely details of the representation of a bodybuilder and were not capable of being remembered by consumers. Further, although article 7(1)(c) only applies where the mark exclusively designates descriptive characteristics, it can apply even if the mark is not the only way of designating those characteristics.

Universal also argued that the mark had several meanings and conveyed a message that went beyond bodybuilding. However, the Court held that the alleged aesthetic character of the mark did not require any mental effort on behalf of the relevant public, who would immediately be able to perceive the meaning of the mark as referring to bodybuilding. Further, under settled case-law, even if a mark has several meanings, it must be refused registration if at least one of its possible meanings is descriptive.

Finally, Universal argued that there was no public interest in requiring that such a mark be left freely available, because there were unlimited ways of depicting bodybuilders. However, the Court noted that, under settled case-law, the application of article 7(1)(c) does not depend on the existence of a real, current or serious need to leave a sign free. Where a mark is perceived as a merely descriptive indication, its registration must be refused, irrespective of whether there are other options for conveying the same message.

Since the mark was descriptive and non-registrable under article 7(1)(c), the Court held it was not necessary to consider Universal’s appeal in relation to article 7(1)(b). (The Board of Appeal had also found that the mark was devoid of any distinctive character, and therefore non-registrable under article 7(1)(b), on the ground that it consisted of a representation of a bodybuilder which did not enable the relevant public to perceive it as an indication of the commercial origin of goods or services.)

T-335/19