The Fifth Board of Appeal of the EUIPO in its decision R-2465/2023-5 of April 9, 2024 made significant reflections regarding the protection of figurative marks in the jewelry sector.

THE CASE.

An Austrian company, on Dec. 29, 2022, filed figurative trademark application No. 1704449 for classes: 3, 9, 14, 18, 25 and 35.

In the first instance, the EUIPO, in a decision dated November 8, 2023, partially granted the trademark application, denying it for goods in Class No. 14 (jewelry and costume jewelry).

According to the Office, the figurative mark, as it does not significantly deviate from the usual and standard forms of the jewelry and costume jewelry industry, would lack distinctiveness under Article 7, 42(2) of the RMUE. The decision was appealed by the company.

THE DECISION OF THE BOARD OF APPEAL

After considering the applicant’s arguments, the Board of Appel reached the same conclusion. Finding the appeal unfounded, he upheld the contested decision, raising very significant thoughts.

THE DISTINCTIVE ABILITY

Recalling established case law, the Commission reiterated that marks lacking distinctiveness under Art. 7(1)(b) RMUE are those marks which, lacking their essential characteristic, do not enable consumers to distinguish the goods or services of one undertaking from those of another, and especially thus do not enable the consumer — who has purchased the goods or services marked by the mark — to repeat the purchase if he was satisfied with it, or not to repeat the experience if it is found to be negative, on a subsequent purchase. Even a lack of distinctiveness is sufficient to obtain a refusal to register a trademark: the case under discussion demonstrates just that.

The appealed mark is a figurative mark consisting of a geometric figure representing a cross in the shape of four arrows with a circle in the center and the letter “X” resembling a stylized star.

A sign, this one, considered by the EUIPO to be “excessively simple” to be used to distinguish small jewelry or costume jewelry products, which in most cases often feature exactly those shapes.

It is precisely in cases such as these, the college reiterates, that only a trademark that deviates significantly from the norm or industry usage and thus fulfills its distinctive function will be able to pass the scrutiny required by Art. 7(1)(b) RMUE.

THE TARGET AUDIENCE

What’s more, the Commission addresses a very interesting argument: the level of attention of the relevant public cannot, by itself, be an evaluative (let alone decisive) element of the judgment of whether a given sign is more or less distinctive. Indeed, it is true that the average consumer of the goods and services in question must be taken into account in assessing the sign’s distinctiveness, but it cannot be argued that because the relevant sector involves a sophistication of the good or service, a price that is not immediately accessible, the specific knowledge and skills required for the proper appreciation of such goods-and, therefore, the public will be average or highly attentive-this alone is sufficient to justify a favorable judgment to be accorded even to signs of inherently weak distinctiveness. If anything, the opposite will be true: it is precisely a high level of specialized audience attention that justifies the use of signs containing specific terms, words or figurative elements that are immediately còlected by a specialized audience. In this sense, a high degree of distinctiveness is required, if anything, for certain commodity sectors, which is more specific than what is not required for inexpensive, widely consumed goods or services.

THE NEED FOR SIGN DIVERSIFICATION IN THE JEWELRY INDUSTRY

The rationale for this decision is rooted precisely in the peculiarity of the relevant commodity sector. The jewelry market has traditionally been characterized by a variety of shapes and designs, and in order to maintain that variety and ensure design freedom, it is appropriate to ensure that the relevant market remains free of any patents that might limit the ability of market participants to take full advantage of the available shapes in any new combination.

According to the EUIPO, the applicant has not presented any arguments that could demonstrate that the average consumer in the industry would perceive this sign as a trademark and not just a figurative element.

Precisely because the figurative mark without any difficult imagery could very well represent to the average consumer one of many variants of the goods belonging to Class 14, and thus not represent a distinctive sign, the EUIPO refused to register the mark in question.

In the face of this decision, it can be argued that, for the purposes of a figurative mark registration in the jewelry sector, it is appropriate to diversify the figurative sign-especially if it is particularly simple-by inserting additional graphic, denominative and/or chromatic elements that are likely to give distinctiveness to the sign.