Can a pattern on a bus be protected as a trademark? An assessment of the distinctive character of non-traditional marks

Introduction: what is a trademark?

A sign used in trade to identify the origin of products or services can consist of a ‘traditional’ word or figurative mark, on the one hand, or can have ‘non-traditional’ representation such as color, sound, multimedia or the position of visual element, on the other.

Nowadays most IP Offices in the EU Member States are more lenient to accepting such non-traditional marks for registration. However as before, to be eligible for trade mark registration, a sign must meet the requirement of distinctiveness.

In October 2017 the European Parliament and Council (by means of Regulation (EU) 2015/2424) abolished the graphical representation requirement. Before CJEU case law defined this graphical representation requirement as the obligation for a sign to meet the following requirement: clear, precise, self-contained, easily accessible, intelligible, durable and objective (see SIECKMANN case ECJ C-273/00, Judgment of 12 December 2002).

Although the reform opened up the road to a multitude of new types of trademarks, any of these must of course still make it through to the examination stage where among others the inherent distinctive character is assessed.

So what about for non-traditional marks and in particular for the position mark ?

In a recent Decision of the CJEU (Case C-456/19), the Court stressed the need for an assessment which takes into account the perception of the relevant public of the affixing of the sign to the goods, without it being necessary to examine whether the sign departs significantly from the norm or customs of the economic sector concerned.

Facts

The Swedish company Aktiebolaget Östgötrafiken in November 2016 filed the figurative marks

for vehicles in class 12 and transport services in class 39. It specified that the trademark application related to the coloring of vehicles in red, white and orange and did not relate to the actual shape of the vehicles.

The Swedish Trademark Office issued a decision of refusal based on absolute grounds, considering that these trademarks could not be perceived as signs capable of distinguishing the services covered as they were purely decorative.

The applicant, however, argued that these were position marks, having a specific size and placed in a specific position on vehicles used for providing transport services. Additional images (with dotted lines) were provided to clarify that protection was sought not for the shape of the vehicles:

Decision

Despite the Applicant’s efforts to explain that transport companies affix their graphics to vehicles “so that users of the services which they provide regard those graphics or colorings as indicators of commercial origin”, the Patent and Market Court dismissed the action brought by the appellant against the decision of the Swedish Trademark Office, arguing that these decorative elements could only be perceived as an indication of commercial origin if they differ sufficiently from the norm or customs in the sector.

However, this view was not supported by the CJEU, as in its subsequent decision the CJEU held that the assessment of the distinctive character of a sign cannot be assessed independently of the perception of the relevant public of the affixing of that sign to those goods (goods used to provide the services).

The CJUE pointed out that the criterion for assessment of whether there is a significant departure from the norm or customs of the economic sector concerned applies where the sign consists of the shape of the product for which registration as a trademark is sought OR where the signs consist of the representation of the layout of the physical space in which the services are provided (see Apple Case (see Apple Case C-421/13).

Such a situation does not arise when the sign consists of graphic elements intended to be affixed to goods which are used to provide the services designated by the application for registration.

Conclusion

So although the registration of “non-traditional” trademarks proves to be complicated, note that the CJEU ruled that the public perceptions may vary without it being necessary to examine whether such type of sign departs significantly from the norm or customs of the economic sector concerned.