Colgate-Palmolive Co., filed an EU trade mark application for the logo above for ‘toothbrushes’ in class 21.
The EUIPO rejected this decision on the grounds that the mark was descriptive of toothbrushes and therefore lacked distinctive character.
Board of Appeal
The applicant filed a notice of appeal against the EUIPO examiner’s decision but this was rejected by the Board of Appeal on the basis that the ’360°’ element would be understood by the average consumer as meaning ‘all round’ in accordance with the general mathematical meaning of ’360°’. Consumers would take this to mean that the toothbrushes were capable of providing deep brushing.
The Board also said that the stylised elements of the marks added to the ‘all round’ connotations of the ’360°’ element of the mark, and therefore would not detract from the descriptiveness of the mark overall.
The applicant had in addition failed to provide sufficient evidence of acquired distinctiveness (having relied only on sales figures and examples of advertisements). The Board also found that the applicant had failed to show that consumers perceive the mark as designating origin, since the advertisements it submitted as evidence did not show use of the ’360°’ on its own, but always in connection with the Colgate name. The advertisements also showed the mark in use with other descriptive terms, such as ‘DeepClean’ and ‘ActiFlex’, and so consumers were likely to see ’360°’ as another description of the technical specification of the Colgate toothbrushes. The term ’360°’ should be free to use by other traders selling toothbrushes and the applicant should not be able to monopolise its use.
On appeal, the Court agreed with the Board in finding that the ’360°’ element mark was capable of describing a characteristic of toothbrushes, and that the Board did not err in focusing its analysis of the mark on the that element. In any case, it agreed that the ‘swoosh’ element and general stylisation of the mark did not sufficiently negate the descriptiveness of the mark overall.
The Court considered the applicant’s arguments that it was not possible to clean all around the tooth and the interdental grooves, and therefore the ‘all round’ meaning given to the mark would not directly correlate with the goods. However, the Court disagreed with this claim and highlighted that the applicant’s own evidence showed that ‘all round’ cleaning was possible.
The applicant also claimed that the Board had infringed the principle of equal treatment by failing to take into account various EU, national and international registrations for the word mark ’360°’ for ‘toothpaste and mouthwash’ in Class 3 which the applicant had cited. In rejecting this claim, the Court highlighted that the EU trade mark regime is autonomous and that the EUIPO are not bound by regimes of other trade mark offices, including those in EU Member States. The Court also highlighted that EUIPO decisions on registrability are only made based on the governing regulations and not on the basis of previous EUIPO decisions. In other words, EUIPO examiners are not bound by decision other EUIPO examiners have made.
In addressing the applicant’s acquired distinctiveness claim, the Court highlighted that sales figures and examples of advertising can only be considered secondary evidence for proving this type of claim. Primary evidence would consist of surveys, market research and statements from trade associations. It found that the Board was correct in finding that the evidence was not sufficient in showing acquired distinctiveness since it did not relate to a sufficiently representative part of the combined population of the EU. The Court agreed with the Board that in the absence of any additional evidence making it possible to determine the market shares which the sales figures represented in each Member State and the proportion of consumers in those Member States who perceived the mark as designating origin, those sales figures on their own were not capable of showing acquired distinctiveness.
The Court also highlighted that the evidence that was submitted by the applicant on acquired distinctiveness did not show the mark in use on its own. Instead, it was only used in association with the ‘Colgate’ name and descriptive terms such as ‘ActiFlex’, ‘DeepClean’ or ‘Surround’. While this does not automatically mean the mark lacks distinctive character, the Court stated that the applicant had failed to provide evidence which specifically showed that the mark had acquired distinctive character in its own right and that the average consumer would perceive a toothbrush designated exclusively by the 360° mark on its own (as opposed to any other mark which might be present, i.e. Colgate), as coming from the applicant.
Lastly, the Court reinforced that long-standing use of a mark is not sufficient on its own to show acquired distinctiveness, as it is the public’s perception of trade origin which counts.
The Court dismissed the appeal in its entirety and the applicant was ordered to pay the costs.
Case Ref: T-333/16