The First Board of Appeal at EUIPO has ruled that the shape of the VW Bus (commonly referred to as “Bulli”), the cult van of Volkswagen (“VW”) is protectable as a 3D trademark and shall be registered accordingly as a European trademark (Decision of the First Board of Appeal at EUIPO of 29 November 2021, case no. R 2421/2020-1).
VW filed an application for registration of the shape shown below as a 3D European trademark.
(EUTM no. 016675721, application published)
The EUIPO refused to register the trademark, holding that the shape of the Bulli lacks distinctiveness for vehicles. The appeal of Volkswagen against this decision was successful. The First Board of Appeal concludes that the shape is considered inherently distinctive by the relevant public, also for vehicles. The contested decision was annulled, and the case was referred to the examination division for continuation of the registration procedure.
The Board argued that the V-shaped bead, which is also reminiscent of an insect’s head, is placed where the relevant public would normally expect to find a radiator grille. Therefore, the V-shaped bead is perceived as a remarkable feature – even without the addition of the VW logo – and significantly influences the overall impression of the shape. The Board of Appeal stated that the other characteristic features such as the roundish shape, the division of the windshield and the round headlights were also so unusual that the relevant public could recognize an indication of origin, rather than just the banal shape of a van. The distinctive character of the shape of the “Bulli” was confirmed by the First Board of Appeal by a comparison with other vehicles: The shape of the “Bulli” was not common for vans at the relevant time of filing or in the 1950s when the Bulli was first put on the market. Thus, the shape of the “Bulli” does not simply present itself as a variant of similar vehicles but deviates significantly from the shapes of common vans then and now.
The decision of the Board is dogmatically consistent and good news for the protection of 3D trademarks. According to the relevant EU case law, product shapes can also be inherently distinctive and protected as trademarks if the shape of the goods clearly distinguishes them from the usual and expected in the relevant product segment and therefore remains in the memory of the customer as an indication of the company (see e.g. German Supreme Court (BGH), decision of 15 December 2005, I ZB 33/04 (BPatG) – Porsche Boxster). This principle of jurisdiction also applies in Switzerland. However, experience has shown that the Swiss courts tend to reject three-dimensional trademarks on the grounds of lack of distinctiveness, even if they clearly stand out from the familiar and well-known ones, and always require proof of distinctiveness for 3D trademarks. The number of inherently distinctive 3D trademarks in Switzerland is therefore negligible. For example, the identical trademark for the shape of the VW “Bulli” was not approved for trademark protection for vehicles in Switzerland [see Swiss part of the IR trademark no. 922784]. It would be a good thing if the Swiss IPI and our courts were to take a look across the border in this case.