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CGUE: the distinctive capacity of a sign does not always presuppose the evaluation of the standards or customs of the reference sector

EU Court of Justice, 8 October 2020, case C-456/19

date: 19.10.2020
Area: Intellectual Property

The EU Court of Justice recently ruled on a reference for a preliminary ruling by Sweden on the question whether Article 4(1)(b) of Directive 2015/2436 on the EU trade mark must be interpreted as meaning that, in the case of an application for registration of a trade mark intended to designate services and consisting of a sign positioned in a certain way and covering a large part of the surface of the tangible objects used to provide the services in question, it is necessary to examine the extent to which the trade mark is independent of the appearance of those objects. If so, to be considered distinctive, is it necessary for the mark to differ significantly from the norms or customs of the relevant sector?

In the present case, the mark for which registration was requested consisted of a number of ellipses of various sizes, in red, orange and white, placed in a certain position on buses and trains to indicate that the service provided was a transport service, with the clarification that the protection requested did not concern the shape of the vehicles.

The Court found that the applicable trademark directive ratione temporis is Directive 2008/95, rather than the one referred to by the Swedish Court. The Court also noted that, in the present case, the distinctiveness of the mark can be assessed based on the use made of it, without it being necessary to verify whether the sign differs significantly from the rules or customs of the economic sector concerned. On this point, the Court specified that, under the 2008 Directive, the assessment of whether there is a significant deviation from the norm or customs of the relevant sector, must be made only if the sign consists of a shape or the external appearance of the product for which registration as a trade mark is sought. However, this is not the case here, as the signs in question are made up of graphic elements and colour compositions which are not intended to represent a product or the physical space in which the services are provided, nor can they be confused with the shape of the goods on which they are affixed.

Therefore, the distinctive character of the signs in question must be assessed with reference to the profile of the relevant public perception, without any significant deviation from the norm or customs of the relevant economic sector.

CGUE: the distinctive capacity of a sign does not always presuppose the evaluation of the standards or customs of the reference sector

EU Court of Justice, 8 October 2020, case C-456/19

date: 19.10.2020
Area: Intellectual Property

The EU Court of Justice recently ruled on a reference for a preliminary ruling by Sweden on the question whether Article 4(1)(b) of Directive 2015/2436 on the EU trade mark must be interpreted as meaning that, in the case of an application for registration of a trade mark intended to designate services and consisting of a sign positioned in a certain way and covering a large part of the surface of the tangible objects used to provide the services in question, it is necessary to examine the extent to which the trade mark is independent of the appearance of those objects. If so, to be considered distinctive, is it necessary for the mark to differ significantly from the norms or customs of the relevant sector?

In the present case, the mark for which registration was requested consisted of a number of ellipses of various sizes, in red, orange and white, placed in a certain position on buses and trains to indicate that the service provided was a transport service, with the clarification that the protection requested did not concern the shape of the vehicles.

The Court found that the applicable trademark directive ratione temporis is Directive 2008/95, rather than the one referred to by the Swedish Court. The Court also noted that, in the present case, the distinctiveness of the mark can be assessed based on the use made of it, without it being necessary to verify whether the sign differs significantly from the rules or customs of the economic sector concerned. On this point, the Court specified that, under the 2008 Directive, the assessment of whether there is a significant deviation from the norm or customs of the relevant sector, must be made only if the sign consists of a shape or the external appearance of the product for which registration as a trade mark is sought. However, this is not the case here, as the signs in question are made up of graphic elements and colour compositions which are not intended to represent a product or the physical space in which the services are provided, nor can they be confused with the shape of the goods on which they are affixed.

Therefore, the distinctive character of the signs in question must be assessed with reference to the profile of the relevant public perception, without any significant deviation from the norm or customs of the relevant economic sector.