Last month, the EU’s General Court issued its judgement on the trademark application of Chinese undertaking Anta, ruling that the EU’s Intellectual Property Office (EUIPO) was correct in refusing the trademark application on the grounds that the sign was simply a decorative element, rather than a figurative or device mark capable of functioning as a trademark.

As we have written previously, a brand name or logo must fulfil certain criteria in order to be registrable as a trademark (see guidance here). In particular, it must have ‘distinctive’ character in order to enable the relevant public to distinguish the marked goods and services as belonging to a specific undertaking, as opposed to goods and services originating from other undertakings. It must also be sufficiently clear and precise.

In this recent ruling, the EU’s General Court addressed the issue of whether simple geometric shapes could function as figurative (also known as device) trademarks. It found that they could not, as signs will be perceived as mere decoration by the relevant public.

Background to the ruling

The Chinese undertaking Anta filed a EU trademark (EUTM) application for the image, shown below right, covering classes 18, 25 and 28 (leather goods, clothing and sports equipment). After examination, EUIPO refused the application and, on appeal, EUIPO’s Board of Appeal agreed with that refusal. Anta appealed again to the EU’s General Court, which confirmed EUIPO’s original findings; in particular:

  • The products for which protection was sought under the sign are common consumer goods;
  • The consumer of such goods does not have a higher attentiveness than the average EU consumer;
  • Although the sign is not a common geometrical figure (such as a circle or a triangle), the sign can still not be regarded as particularly eye-catching, memorable or recognisable;
  • The sign at issue will be perceived as a simple combination of two lines that might bring to mind other combinations of lines used on clothing for aesthetic or ornamental purposes;
  • Therefore, the relevant consumer will perceive the sign as a decorative element; and
  • The sign lacks distinctive character and is not eligible for trademark protection.

Overcoming limitations in distinctive character

f a sign is initially ruled unsuitable to be registered as a trademark, it could still be eligible for trademark protection at a later date by acquiring distinctiveness through use. ‘Acquired distinctiveness’ can apply where the trademark has become widely recognised through long-term or intensive use; in other words, the sign has begun to function as a distinguishing sign, and thus as a trademark. That said, it is generally advisable to begin with a brand name or logo that is strong enough (and available) to be registered on first application.

Signs that have a limited distinctive character may be strengthened by combining them with a distinctive element (e.g. a composite mark including a word and figurative element). Although note that the resulting trademark right will then only cover the trademark in totality, rather than the elements individually.

Find out more

The assessment of a mark’s distinctiveness can often be subjective. However, it is possible to assess the feasibility of registration for a chosen brand name by reviewing it for descriptive and distinctive elements. It is also important to check that the mark is available for use prior to any brand launch.