Buttoning down distinctive character of a trademark: the BALMAIN EUTM decisions

Background

Pierre Balmain (the Applicant) tried to register two EUTMs consisting of the representation of a lion's head encircled by rings forming a chain for a number of goods in classes 9, 14, 18, 25 and 26. With its decisions of 5 February 2020 in cases T-331/19 and T-332/19 (the BALMAIN decisions) the EU General Court (GC) upheld the partial refusal issued by the examiner (and confirmed by the Board of Appeal), ruling that the marks applied for lacked of distinctive character for goods in classes 14 and 26. Interestingly, in its decisions the GC considered that case-law relating to 3D marks was applicable, even though the EUTMs applied for were classified as figurative marks. On this ground, it concluded that the marks were devoid of distinctive character, since they did not deviate significantly from the norms and customs of the sector.

EUIPO decisions

According to article 7(1)(b) EUTMR, marks which are devoid of distinctive character cannot be registered. The provision does not distinguish between different categories of trade marks in determining whether a trade mark is capable of distinguishing the goods or services of one undertaking from those of other undertakings.

Still, following the practice of the Office, in applying this uniform legal standard to different trademarks and categories of trademarks, a distinction must be made depending on consumer perception and market conditions. For signs consisting of the shape of the goods themselves, no stricter criteria apply than for other marks, but it may be more difficult to come to a finding of distinctiveness, as such marks will not necessarily be perceived by the relevant public in the same way as a word or figurative mark (see C-136/02 P, Torches, para. 30).

In particular, according to well-settled case law, to be distinctive, the shape must differ significantly from the shape that is expected by the consumer, and it must differ significantly from the norm or customs of the sector. The more closely the shape resembles the shape that is most likely to be taken by the product in question, the less likely it is to be found distinctive.

General Court's findings

Case law applying to 3D marks also applies to the case at issue

Notably, the two EUTMs applied for formally qualify as figurative marks, specifically the representation of a lion's head encircled by rings forming a chain. Nevertheless, the General Court (as the Board of Appeal did previously) refers in its rulings to the jurisprudence related to 3D marks.

The Court’s reasoning for this is that "it cannot be ruled out that the mark applied for may, in one of its uses, be applied to buttons, so that the Board of Appeal applied the case-law relating to three-dimensional marks without committing any error" (para. 44).

The GC also notes at paragraph 45 of its decision, "the mere possibility that a mark constitutes all or part of the form of the products for which protection is claimed is sufficient to apply the case-law relating to signs which are indistinguishable from the appearance of the goods" (see also  Birkenstock Sales/EUIPO, C-26/17 P, and Fraas/OHMI T-326/10, points 52 to 57).

The EUTMs do not significantly depart from the norms and customs of the sector
The Court concluded that the marks applied for did not significantly deviate from the norms and customs of the sector and, as such, they lacked of distinctive character. In particular, the GC reasoned as follows:

• The Applicant claimed that the image of a lion's head would be a "characteristic which is easily and immediately memorisable", but the Court notes that, for the products concerned, there is a tradition of using animal heads, in particular lion heads (paras.35 and 36). These trademarks then do not differ significantly from the norms of the  haberdashery sector in Classes 14 and 26.
   
• Similarly, the claim that these marks are "composed of a fanciful and original graphic representation of a lion's head resulting from an artistic creation", is not relevant to this assessment as the distinctive character of a sign cannot be inferred from its alleged fancifulness or originality (para.41).
   
• The GC also rejects the Applicant’s argument that these marks should be granted protection as they are in no way descriptive of the goods claimed. As the Court correctly points out, descriptive character and lack of distinctiveness of a mark are two different criteria, which are based on different points of the EUTMR.
   

The enhanced level of attention of the specialised public cannot offset the lower degree of distinctiveness of a mark
 The GC agrees with the Board of Appeal that the goods at issue are directed at the average consumer, the sole exception being "press-studs for footwear (fasteners)" in class 26, for which the relevant public would be the fashion sector or a professional public.
 
However, it then clarifies that, contrary to the Applicant's arguments, the enhanced degree of attention of a specialized public would not necessarily offset a lower degree of distinctiveness of the sign (para. 31, referring, among the others, to  Fränkischer Weinbauverband/EUIPO (Forme d’une bouteille ellipsoïdale), T68/18, para. 25]). On this clarification, the Court notes that, "a mark must enable the relevant public, without making an analysis or comparison, and without paying particular attention, to distinguish the product concerned from those of other companies" (para. 30). The GC adds that such higher level of attention would however apply to "press-studs for footwear (fasteners)" in class 26.

Comment and next steps

By refusing registration to Balmain's EUTM applications, the GC confirms that, although article 7(1)(b) EUTMR does not distinguish between different categories of trade marks - 3D marks and figurative marks consisting in the shape of goods can only be registered provided that they significantly depart from the norm or customs of the sector. Moreover, it clarifies that a lower degree of distinctiveness of a mark cannot be offset by the enhanced level of attention of the relevant public.

This decision may well make it more difficult for EUTM applications to successfully overcome the assessment of distinctiveness, regardless of the type of mark applied for. In addition,  the enhanced level of attention of the public concerned may not offset such an assessment.