A decision of the EU General Court has upheld a EUIPO Board of Appeal judgement invalidating a three-dimensional registered trade mark for a lighter.

The trade mark, which features a graphic of a lighter with a lateral fin and the word ‘clipper’ as shown above, was registered for good and services including in classes 4 (fuel gas, compressed), 34 (lighters for smokers) and 35 (advertising, business services). In 2011, an intervener submitted an application for the trade mark to be declared invalid for all the goods and services, arguing that the shape of the mark was not distinctive. This application was refused. The intervener appealed the decision, and in 2015 the EUIPO Board of Appeal upheld the appeal in its entirety. This decision was then appealed to the General Court.

The General Court decision

The intervener argued the mark consisted solely of elements which were necessary for the product to function, and that the overall shape could not be considered fundamentally different from the norms or customs of the lighter industry. As a result the trade mark could theoretically have granted a monopoly over the functional characteristics of a lighter, seriously restricting the possibility for others to use those characteristics. Although the trade mark owner attempted to argue that elements of the trade mark, in particular the lateral fin and the slots on the hood of the lighter, were in fact decorative, the intervener successfully demonstrated that both of these features assisted in the functioning of the lighter. For this reason, they could not be considered non-functional and distinctive.

There was one element of the trade mark which was not functional: the word ‘clipper’. The trade mark owner argued that the presence of this decorative word element was an essential feature of the mark, and that this made it distinctive.

There were two reasons why this argument was rejected by the General Court. Firstly, the word element of the trade mark was extremely small and appeared as dark grey on a light grey background. As a result of this, it was not very visible to consumers, and was therefore of secondary importance to the shape of the mark itself.

Furthermore, the Court argued that the trade mark application itself indicated that the word was not a significant element of the design. The application specified that it was only for a ‘three-dimensional mark’, rather than a word element, and of the five graphic representations of the mark, only one included the word ‘clipper’. For this reason, the Court dismissed the argument that ‘clipper’ was an essential element of the trade mark design, arguing that even the applicant itself had made the word of lesser importance than the structure. The Court reiterated however that, even if the trade mark owner had been clear in its application that the “clipper” word was an important element, it could not be deemed essential given the small size of the word and its lack of visibility on the product.

The trade mark owner’s second argument rested on the mark having acquired distinctive character. Although the trade mark owner provided evidence to support this argument, the Court found that this was insufficient, and did not demonstrate the market share held by the mark, the amount invested in promoting the mark, or the proportion of the market that would be able to connect the mark with the product. As a result, the Court rejected this argument.

The appeal was therefore rejected and the Court upheld the finding of invalidity.

Points to take away

The Court made the following points in its judgement:

  1. When creating a three-dimensional trade mark, two-dimensional elements, including words, should be prominent enough to attract the consumer’s attention if they are to be deemed covered by the application.
  2. Applicants must be clear in an application what the essential elements of a mark are. The Court will not interpret an element as being essential unless this has been expressly made clear in the application.
  3. Only three-dimensional marks that depart significantly from the norm or customs of an industry (and are therefore capable of indicating a product’s origin) can be deemed non-functional and capable of registration.

Case – T-580/15