In a recent judgment of June 27, 2017, the General Court of the European Union found that, at least in specific scenarios, the restrictive case law regarding the inherent distinctiveness of three-dimensional trademarks can also be applied to service marks.

According to the established case law of the European courts, three-dimensional trademarks depicting the goods covered by their specifications possess the necessary degree of inherent distinctiveness only if they depart significantly from the norm or customs of the respective industry (e.g. judgment of the Court of Justice of the European Union of May 15, 2014, C-97/12 P Louis Vuitton Malletier/EUIPO, at para. 52). In order to be regarded as distinctive, such a mark must not appear to be a mere variant of the basic shapes of the product in question. As a result, applications for three-dimensional product depicting trademarks are rarely successful, unless the applicant is able to prove that they acquired distinctiveness under Art. 7 (3) EUTMR due to their long-standing and successful use.

In its judgment of June 27, 2017, T-580/15 Flamagas/EUIPO – MatMind, at paras. 72 et. seq., the General Court of the European Union now confirmed the applicability of this string of case law to three-dimensional trademarks not claiming tangible goods but intangible services. The case at hand concerned a three-dimensional trademark consisting of the form of a lighter. In addition to goods in classes 4 and 34 of the Nice classification, the application also claimed a number of services in class 35, namely “advertising, business management, business administration, office functions, including advertising relating to import, export, sole agencies and representation services for lighters of all kinds for smokers”. In the beginning, the court denies registrability of the trademark for the goods claimed in classes 4 and 35 (e.g. lighters for smokers) by pointing out that all of the sign’s essential characteristics served to obtain technical results (Art. 7 (1) (e) (ii) EUTMR). This particular ground for refusal was not applicable to the services claimed in class 35. With a view to these services, however, the General Court applied the above-mentioned strict requirements on the protectability of three-dimensional product marks. According to the court, the appearance of the shape of the mark at issue did not differ significantly from the norm or customs of the lighter industry and thus conveyed an overall impression of the area of competency and specialization of the services covered by the mark at issue. As a result, it found that the trademark lacked the necessary minimum degree of distinctiveness.

Practical Impact:

The above outlined reasoning of the General Court can and will have a significant impact on the registrability of three-dimensional service marks. Particularly in view of the more general deliberations in the judgment, an applicant must be prepared to deal with a “lack of distinctiveness” objection as soon as a sufficiently direct connection between the product depicted by the mark and the services claimed can be established. This is particularly relevant where the respective product can be used as means in carrying out the service at issue. For example, the lighter in the case decided by the General Court can be used as a promotional giveaway and is thus, in the Court’s opinion, not capable of indicating the commercial origin of advertising services.

As an aside, these problems can also not be overcome by applying an insignificant additional word element to the three-dimensional sign. In the case at issue, the word element “clipper” was written on the upper front side of the lighter. In the General Court’s opinion, however, this element was of extremely minor importance due to its small size and the low contrast of the font color.