The European Union Intellectual Property Office (EUIPO) recently rejected an application to register a virtual firearm as a trademark. In its decision (reference number R 275/2023-4), the Fourth Board of Appeal of the EUIPO found that the graphic representation of the virtual firearm lacked the distinctive character necessary for trademark registration.
In 2022, the Czech company Colt CZ Group SE filed an application for trademark registration (including in classes 9, 35 and 41) primarily in the field of virtual goods and services for providing virtual weapons for virtual use via the Internet.
In 2022, the EUIPO issued a decision refusing the application for registration of the mark on the grounds that the mark in question lacked distinctive character under Article 7(1)(b) of Regulation (EU) 2017/1001 of the European Parliament and of the Council on the European Union trademark (Regulation). The reasoning for rejecting the mark was that, first and foremost, the mark submitted constituted a faithful representation of a virtual firearm, not significantly different from its common depiction, and that the relevant public could perceive it as such, which prevents the commercial communication of such a mark. Furthermore, it was noted that the level of attention of the relevant consumer (recipient) would have to be medium or high, as the widespread use of information technology (IT) means that it is very likely that the goods or services in question would be used by individuals without detailed knowledge of firearms. Furthermore, it was noted that the fact that the relevant public may be comprised of individuals with specialized knowledge does not affect the legal criteria used to assess the distinctiveness of a mark, nor does prior use of the mark affect its distinctiveness. Consequently, it was found that the virtual weapon in question lacks distinctiveness.
The Czech company Colt appealed the above ruling, arguing primarily that the specific nature of the application was not taken into account during the examination of the case, in particular that the mark submitted represented a weapon that significantly deviated from the typical representation of a firearm. According to the appellant, the mark in question, depicting an assault rifle, had a complex shape that would be recognizable to any consumer even slightly interested in firearms. It further argued that the overall appearance of the mark in question gave it a unique appearance that would be obvious to the relevant consumer, and also included the word element "CZ BREN 2." It also emphasized that, although the virtual world was becoming increasingly popular, the products and services in question were not widely available, and the relevant consumers would be those interested in firearms or virtual firearms. The appellant also noted that the shape of the "CZ BREN 2" assault rifle was registered as a Community design, which determined its individual character.
The Board of Appeal found that distinctive character within the meaning of Article 7(1)(b) of the Regulation means that the trade mark applied for must "serve to identify the goods or services covered by the application for registration as originating from a particular undertaking and thus distinguish the goods or services from those of other undertakings", while the "distinctive character" of the mark must be assessed primarily in the light of the goods and services applied for and, moreover, in the light of the perception of the mark by the relevant public.
Regarding the distinctive character of a mark, the Board of Appeal found that while it is usually sufficient for a non-distinctive sign to contain distinctive verbal (or figurative) elements for the entire mark to be distinctive, this principle does not apply if these elements are insignificant. In the present case, it was found that the verbal element "CZ BREN 2" was a completely insignificant element due to its small size, given the already miniature size of the entire mark, as well as the lack of contrast between the verbal element and its background. The Board of Appeal found that a significant portion of the public would not be able to identify the verbal element without significant effort, and that an examination of distinctive character for other consumers within the same public was unnecessary. With regard to the visual representation of the mark, the Board of Appeal found that the appellant had failed to demonstrate that the mark in question was not, naturally and automatically, without further reflection, a typical representation of a rifle (virtual or real) that would be perceived as such by consumers. Therefore, the Board of Appeal found that the mark in question did not significantly deviate from the norms and customs of the relevant market sector and did not contain the essential elements that average consumers might expect from virtual weapons available on the market. Regarding the determination of the relevant public, the Board of Appeal found that the relevant public was primarily the general public, and that the average consumer's attention level varied depending on the category of goods or services in question. While it cannot be ruled out that some consumers had a broader knowledge of weapons, it would be inappropriate to define the relevant public solely as this narrowly defined group. It was recognized that the consumer (recipient) of the goods and services did not have to be a virtual weapons specialist, and therefore it was right to conclude that such consumers' attention level would have to be medium or high.
In summary, the Board of Appeal found that the mark in question constituted too obvious a representation of a given item, which prevented the relevant consumer group (public) from determining the origin of such goods or services, and therefore the appeal was dismissed.
This alert is for informational purposes only and does not constitute legal advice.
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