The General Court of the European Union [the General Court; a member of the Court of Justice of the European Union (CJEU)] in its recent judgment of 26 July 2023 dismissed the appeal of the Polish company Apart to declare the registration of the distinctive teddy bear symbol to be "expired", thus ruling in favour of the Catalan jewellery company TOUS in using this logo.
The case dates back to 2009, when the company S. TOUS SL (“TOUS”) filed an EU trademark application (no. 8127128) for a figurative mark depicting its distinctive teddy bear, which was registered in 2010, among other things, in Class 14 for jewellery.
Subsequently, in 2017, the Polish company Apart sp. z o. o. (“Apart”), applied to the European Union Intellectual Property Office (EUIPO) for a declaration of invalidity (revocation) of the EU trademark TOUS in question, on the grounds, among other things, of lack of distinctive character (previously Article 7(1)(b) – and currently Article 7(1)(b) of Regulation (EU) 2017/1001 of the European Parliament and of the Council on the European Union trade mark, pursuant to which trademarks devoid of any distinctive character shall not be registered), and also arguing that it is a sign consisting exclusively of a shape which adds significant value to the goods (previously Article 7(1)(e)(iii) – and currently Article 7(1)(b) of the Regulation (EU) 2017/1001). (e)(iii) of Regulation 2017/1001, according to which signs consisting exclusively of shape or another characteristic that significantly increases the value of the goods are not registered. However, the EUIPO Board of Appeal rejected Apart's application, which appealed to the General Court. The General Court dismissed Apart's appeal.
In this case, two issues were crucial: first, the existence of distinctive character (Article 7(1)(b) of the Regulation), and second, the significant value of the goods (Article 7(1)(e)(iii) of the Regulation). Regarding the first of these, i.e., the existence of distinctive character, the Court – in order to assess it – discussed how consumers perceive the sign. It also emphasized that jewelry can take the form of the contested trademark. The average consumer is not in the habit of "guessing" or making assumptions about the origin of a given product based on its shape. Therefore, the more a sign resembles the shape that a given product will most likely take, the greater the likelihood that such a shape will be devoid of distinctive character. Only a trademark that significantly deviates from the norm or standard in a given industry – and also indicates its origin – has distinctive character.
The Court pointed out that the contested mark could be interpreted as depicting the outline of a teddy bear, but also as a figment of imagination. The mark in question only evokes the silhouette of a teddy bear and may not necessarily be perceived that way by all consumers. As the Court emphasized, the subtlety of the contours in this case requires a bit of imagination or fantasy to associate them with the teddy bear. The Court also pointed out that the teddy bear shape itself is unrelated to jewelry. Therefore, regarding the assessment of distinctive character, the Court found that jewelry encompasses a very wide range of products or goods, such as rings, necklaces, earrings, bracelets, etc., and their appearance can vary significantly, while a teddy bear is unrelated to jewelry – therefore, in this case, the consumer will not associate the teddy bear motif with items such as rings, earrings, necklaces, or bracelets. According to the Court, the teddy bear shape is associated more with children's toys, rather than jewelry. Therefore, there is no basis for deprivation of any distinctive character.
As regards the second of the above-mentioned conditions, i.e. the significant value of the goods (in accordance with Article 7(1)(e)(iii) of the Regulation – registration of signs consisting exclusively of the shape or another feature of the goods which increases the significant value of the goods shall be refused), the Court recalled that "the direct purpose of prohibiting the registration of shapes which are purely functional or which increase the significant value of the goods is to prevent the exclusive and permanent right conferred by the trademark from being used to perpetuate other rights to which the legislator wished to grant 'expiration periods'."
The Court pointed out that the contested trademark does not represent a sign consisting solely of the shape of the product. Referring to its reasoning in assessing distinctive character, the Court found that jewelry is not typically shaped like a teddy bear. It should also be emphasized that there is a presumption of validity for an already registered EU trademark. However, according to Apart, the teddy bear is widely recognized as a symbol of love, similar to the heart symbol, which evokes positive emotions and strengthens the desire to purchase. Apart also believed that the aesthetic value of the contested teddy bear as a trademark determines its appeal to consumers and significantly increases the value of the goods. However, the Board of Appeal found that the mere fact that the shape of the contested trademark may be pleasant or attractive is not sufficient to invalidate its registration. In this case, the contested trademark did not represent a sign consisting solely of the shape or other characteristic of the product. The goods designated with the contested teddy bear are jewelry, typically in the form of rings, necklaces, bracelets, etc., and may represent the sign comprising the trademark in question, but not its form. Consequently, the contested trademark teddy bear consists of a sign independent of the appearance of the goods (jewellery) it designates, and not of a sign consisting solely of the shape of those goods.
In practice, however, both the justification and the effect of this judgment may be somewhat debatable.
This alert is for informational purposes only and does not constitute legal advice.
author/editor of the series:
