The following case review of T53/13 first appeared in the ITMA review.

Background

Vans applied to register the mark in question (see right) in Classes 18 and 25 on 14 September 2011 (No. 010263838), which was refused on 7 March 2012 on the basis of Article 7(1)(b) as the mark “consisted of a wavy line which slants and curves” and was devoid of distinctive character. Evidence to show acquired distinctiveness had a number of gaps such that it was held not to be possible to ascertain the degree of recognition by the relevant public.

The appeal filed on 2 May 2012 was dismissed by the Fifth Board of Appeal (BoA) on 14 November 2012. The BoA held that the mark was devoid of any distinctive character as the average consumer would see the mark as a “concept of a wavy line”, which is too vague as a badge of origin. Graphic line stripes are common in respect of goods in Classes 18 and 25, such that the relevant public would view the mark as “exclusively ornamental”. Also, the existence of earlier national registrations was irrelevant and evidence regarding acquired distinctiveness insufficient.

The action to the General Court (Fifth Chamber) was filed on 31 January 2013.

Arguments submitted by Vans

1. Infringement of Article 76(1)

The BoA did not take account of certain annexes which showed that a number of device marks identified were inherently distinctive and had not acquired, despite what the BoA stated, distinctive character through use. Nor did the BoA examine the sales figures or the evidence from independent sources demonstrating acquired distinctiveness.

2. Infringement of Article 7(1)(b)

The goods applied for had a number of sub-categories such that they could not be regarded as one category for which one general statement of reasons was sufficient. Also, the mark is not exclusively decorative.

3. Infringement of Article 7(3)

First, evidence provided in respect of Germany, Spain, France, Italy and the United Kingdom is sufficient to prove distinctive character for the EU as a whole. Second, evidence submitted in respect of footwear is also applicable to the other goods. Third, in the majority of the evidence submitted, the mark applied for does not have a decorative function. Fourth, its page on Facebook is relevant evidence. Fifth, evidence of the revenue generated by goods featuring the side stripe is sufficient.

Decision by the General Court issued on 6 November 2014

1. Infringement of Article 76(1) – rejected

The annexes were taken in to account, as shown in the appeal decision, and dismissed. Also, OHIM is not bound by previous decisions such that the registrations of earlier device only marks are irrelevant. Whilst the BoA erred in stating that the registrations could have been based on the acquisition of distinctive character through use, this cannot constitute an infringement of Article 76.

Additionally, a superficial examination of the evidence, which Vans alleges the BoA carried out, even if found, does not constitute an infringement of Article 76.

2. Infringement of Article 7(1)(b) – rejected

Where the same ground for refusal is given for a category or group of goods/services, a general reasoning for all of the goods/services concerned is sufficient and the Class 18 and 25 goods do indeed form a homogenous category.

Finally, “the mark applied for does not have any characteristic element, nor any striking or eye-catching feature capable of distinguishing it from the customs of the sector and conferring on it a minimum degree of distinctive character, and enabling the consumer to perceive it otherwise than as a simple decoration”.

3. Infringement of Article 7(3)

The evidence provided was insufficient to show that the relevant class of persons  would be able to identify the goods covered by the mark simply because of that mark, or that they would consider the mark to be an indication of the commercial origin of the goods.

Comment

The General Court rejected the action in its entirety.

It is also worth noting that the Second BoA held that Vans’ mark lacked inherent distinctiveness in relation to services (including retail services relating to footwear) in Class 35*. This application has since been withdrawn.

The decision reiterates that a ‘simple’ device mark will be considered inherently unregistrable and decorative unless evidence of acquired distinctiveness can be provided. This evidence will only be considered sufficient if it demonstrates that consumers consider the mark, by itself and without the need for education, to be a badge of origin for the goods and services applied for.

Further, the point was made that an affidavit by itself, particularly one by an employee of the Applicant, cannot be considered sufficient proof in demonstrating acquired distinctiveness.

Therefore, the filing of evidence of acquired distinctiveness must be carefully thought out and not only a compilation of all documentation provided, if any, by the Applicant.

Charlotte Blakey 13 March 2015

*Case R363/2013-2 Vans, Inc v OHIM decision issued on 20 August 2013