19 October, 2016

In the Shadows - A Silhouette Image is Not a Registrable Trademark, Says EU General Court

Images can evoke powerful feelings, associations and preconceptions, especially when paired with particular goods that aim to enhance our lives or even our own well-being. With the health supplement market reaching a staggering $19 billion in 2015, even a small slice of that pie can make any product a huge success monetarily. As the market has grown this competitive, so have the efforts of product manufacturers to distinguish their goods from the rest, including through the use of trademarks and distinctive names. As the products are often, arguably at least, quite similar in functionality and marketing, can one expect to register something simple as, say the silhouette of a body builder, in conjunction with protein supplements? In a recent decision the EU General Court aimed to tackle this problem, and to potentially narrow or widen the scope of these types of marks in the EU.

The case of Universal Protein Supplements v EUIPO dealt with an application to register the silhouette of a body builder by UPS as a EU trademark (using the same image as their registered trademark 11827599), specifically in classes 5, 25 and 35, covering, among others, clothing, nutritional supplements and online retails store services for nutritional supplements. Following UPS' application both the initial examiner and the Board of Appeal rejected the mark, refusing it under both Article 7(1)(b) and (c) of Regulation No 207/2009. USP appealed both decisions, and ultimately ended up in the EU General Court, which handed down its judgment nearly three weeks ago.

Body-building is rough, even with supplements
The General Court first started by assessing whether the mark was only indicative of, among other factors, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods, under Article 7(1)(c). To further expand on this, the provision aims to allow all producers of goods to use certain common indicators of quality and origin, so as to enable proper competition in a particular area of commerce. These indicators also don't serve as proper indicators of origin, allowing for consumers to purchase the same quality product (or in the inverse, avoid the same) knowing fully where it comes from per the marks used. This means that, for a mark to avoid Article 7(1)(c) "...there must be a sufficiently direct and specific relationship between the sign and the goods or services in question such as to enable the public concerned to perceive immediately, without further reflection, a description of the goods and services in question or one of their characteristics".

The Court quickly determined that, in relation to all of the goods in the above classes, the mark was descriptive of those goods, as they related to body-building and were clearly designed for the very same. They added that "...it is common knowledge that drawings and photos of body-builders posing are often reproduced on the products themselves or in advertisements in order to indicate the intended purpose of the goods and services at issue, all relating, in particular, to the practice of body-building". One can appreciate this rationale, since the use of body builders, whether in silhouette form or not, is quite common in body-building and goods associated with it. It is arguable that, as there are plenty of other marks that use the same style of silhouette which have been registered, that the mark should be, potentially, registrable as well.

To summarize their position, the General Court concluded that "...informing the relevant public that the goods and services concerned are made or adapted for body-building, the mark applied for has a sufficiently direct and specific link with nutritional supplements, clothing, footwear, as well as online retail store services of those goods and goods related to health and diet", and the mark therefore fell foul of Article 7(1)(c).

The Court rejected the assertion that a silhouette could not be descriptive of goods as a style of mark, especially when the characteristics of the silhouette are clear and indicative of a body-builder. Also, the mark, although not highly detailed, doesn't require any mental effort from the public that perceives it, making a connection with body-building easily. Finally, although a silhouette of a body-builder can be, in many ways, a very variable style, it still does not mean the silhouette would not be descriptive, even with the possibility of several similar signs distinguishing similar goods successfully. The General Court ultimately rejected the appeal.

While the case is by no means revolutionary, it does illustrate a need to be careful in the choice of marks for specific goods, especially when the depiction could be closely linked to the goods at hand (by way of example, a bar bell could've just as well been descriptive here). Trademarks are a fickle mistress, as many similar marks to the one in question have been successfully registered, and applicants therefore have to be doubly careful with the marks that they choose to use.

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