Following
on from a recent and much-discussed decision allowing registration
of the shape of a speaker as a Community Trade Mark, the
Board of Appeal of Office of Harmonization for the Internal
Market (OHIM) has
allowed registration of the following 3 dimensional mark,
by cult spectacle brand IC! Berlin brillen GmbH (“IC! Berlin”):
History of the application
IC! Berlin applied for its 3D mark as a CTM in respect of spectacles
and sunglasses in class 9.
The examiner objected to the application, on the basis that the mark
was merely part of a portion of a spectacle frame, “which is not
unusual characteristic, fanciful, arbitrary or imaginative since it is
not different enough from those which already exist on the market” and “could
be seen as fulfilling a functional purpose”. The mark was thus
non-distinctive.
Following the first refusal, IC! Berlin limited its
goods specification to screwless spectacles and sunglasses with metal
hinges and removable temples which allow an easy exchange
of the lenses without the use of additional tools, together with
arguments in response to the first refusal. The arguments
referred to existing registrations owned by IC! Berlin for
the 2-dimensional version of the same mark, in countries such as Germany
and the Benelux.
The examiner maintained the objection, stating that:
- The mark would simply be seen as a “modern design of a side
piece”, and not as an indication of origin; and
- National precedents do not bind OHIM.
Decision on Appeal
The Board of Appeal issued a short and succinct decision, allowing registration
of the 3D mark.
The Board considered the mark to look “like a fanciful ‘V’”.
Further, and of great significance, they found that:
- “[C]ommercial experience
shows that it is not unusual for fashion spectacles and sunglasses to
display the mark, usually a monogram, a logo, etc., precisely on .. the
part of the product … where the lens and the temples meet. Consumers
are no doubt aware of this practice and may identify that sign with a
particular source of origin”;
and
- “Consumers are likely
to perceive the ‘modern design’ of the entire product,
but not that of the relatively small area where the temples
meet the lenses or the lens frame” (ie. where the mark in question
was placed). So, and contrary to the finding of the examiner,
while the shape mark was a small part of the spectacles overall,
consumers would perceive that shape as a mark. That is, the shape
mark would not be lost in the overall design. In any case, it was
only that aspect that was applied for (and not the shape of the spectacles
as a whole).
The examiner’s argument that the shape was simply a variation
of a common theme was dismissed by the Board of Appeal, as it was not
substantiated.
Comment
The decision is a reminder that - despite various failed applications
for washing tablets and drink pouches - 3D marks can in particular circumstances
be registered as trade marks. The impact that the 3D marks have on consumers
- would they be seen as a brand? - will largely be determinative.
The decision of the Board of Appeal is therefore a welcome acknowledgement
of commercial and marketing reality: consumers are more than used to
identifying the brand of sunglasses based on such signs, and traders
need to, and should, be able to protect those valuable brands.
An example of how the mark is actually used.
© Davenport Lyons 2008. All rights reserved.
This document reflects the law and practice as at April 2008. It is general
in nature, and does not purport in any way to be comprehensive or a substitute
for specialist legal advice in individual circumstances.
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