Board of appeal

Another glorious day that IP lawyers in midtown only got a glimpse of...Although missing the wonderful spring weather in Manhattan, the IP glitterati were enjoying an afternoon of more IP debate on the first day of the Fordham IP Conference. The final panel of Day 1 of the Fordham promised insights into the European judicial landscape. Over to Kat friend, Emily Bottle (HSF)

The recent decision T 1913/21 highlights a crucial differentiation between second non-medical use claims and process claims. The Board of Appeal found that, according to the established case law, claims in which the technical effect of the invention occurs only as part of a process for producing a product, must be regarded as a process claim and not second non-medical use claims. This distinction has significant implications for the novelty and scope of protection of the claims. Legal background: The novelty of non-medical use claims versus process claims The distinction between second non-medical use claims and process claims is crucial for the assessment of novelty. Use claims, e.g. use of compound X for use in a (non-medical) use Y, are an acceptable claim format in Europe. However, specific case law applies to novelty assessment of such claims, as compared to process claims (IPKat). Second medical use claims are dealt with by different provisions.  Antibody manufactureFor second non-medical use claims, the principles established in decisions G 2/88 and G 6/88 of the Enlarged Board of Appeal (EBA) apply. According to these decisions, a claim to a new use of a known compound for a particular non-medical purpose, which is based on newly identified technical effect should be interpreted as including that technical effect as a functional feature of the claim. Accordingly, such a claim is novel provided that the technical feature has not previously been disclosed (see also Case Law of the Boards of Appeal, I.C.8.1.3).  In other words, according to G 2/88 and G 6/88, a new use based on a newly discovered technical effect of a known compound can be novel even if the physical activity required to carry out the use was already known. For example, the use of compound as e.g. a fungicidal plant spray, may be considered novel even if the use of the compound as a general spray for plants was already known. Whilst the fungicidal use and effect of the compound could be considered inherent in the previous use of spraying plants, the new use is considered to include the fungicidal technical effect as a technical feature of the claim, rendering the claim novel (T 231/85). Non-medical use claims do not permit patent protection for known products The EBA in G 2/88 made it clear that its findings on second non-medical use claims applied specifically to use claims that do not result in a product (r. 5.1). For process claims, Article 64(2) EPC states that "[i]f the subject-matter of the European patent is a process, the protection conferred by the patent shall extend to the products directly obtained by such process". Given that, according to G 2/88, the use considered therein are not those resulting in a product, they should also not fall within the scope of Article 64(2) EPC. As such, second non-medical use claims cannot be used as a back-door method for achieving patent protection for an already known product, even if a new functional feature of the product has been identified.  Case background: Antibody manufacture T 1913/21 related to Biogen's European patent EP 2707383 for methods of preventing and eliminating the formation of trisulfide bonds in proteins, e.g. antibodies, during manufacture. Unwanted trisulfide bonds in antibodies are generally undesirable modifications that may inadvertently affect the antibody's desired function. Claim 1 on appeal was as follows: "Use of an inhibitor of cysteine degradation for reducing the formation of trisulfide bonds in proteins, wherein the inhibitor of cysteine degradation is selected from pyruvate [...], wherein the use comprises: culturing cells expressing said proteins in the presence of an effective amount of the inhibitor of cysteine degradation, whereby trisulfide linkage formation in said proteins is reduced [...]" Claim construction: Use claim or process claim? Following opposition by Roche, the patent was found to be novel and inventive. The Opposition Division construed claim 1 as a second non-medical use claim directed to e.g. pyruvate for reducing trisulfide bond formation in proteins, wherein the technical effect of pyruvate in reducing trisulfide linkage formation was considered a limiting functional feature of the claim. On appeal, the central issue was whether the claim should be construed as a second non-medical use claim (as argued by the Patentee) or as a process claim for the production of proteins (as argued by the Opponents). On appeal, the Board of Appeal disagreed with OD's analysis. The Board of Appeal particularly found that the claim should be regarded as a process claim for the production of proteins, not as a non-medical use claim in the sense of G 2/88 and G 6/88. The Board noted that: "[T]he claimed subject-matter comprises carrying out process steps, which result in the production of a product. Following the principles laid down in G 2/88 and G 6/88 [...] the claimed subject-matter must be regarded as a process for the production of proteins with a 'reduced' number of trisulfide linkages, regardless of the fact that the claim is drafted as the 'use' of a chemical compound." (r. 20) The Board noted that the technical effect stated in the claim ("reducing the formation of trisulfide bonds in proteins") could not occur except as part of a process for producing proteins: "[W]here an invention relates to a new technical effect of a physical entity that can only occur as part of a process for the production or manufacture of a product, such that this effect is inextricably linked to and cannot occur in isolation from the production process, a claim directed to that 'use' of the physical entity to achieve that effect must be regarded as directed to the production process per se." (r. 23) Having construed the claim as a process claim, the Board of Appeal assessed the claims novelty accordingly. The prior art documents disclosed processes for the production of recombinant proteins in which cells were cultured in the presence of pyruvate. The technical effect of "reducing the formation of trisulfide bonds" was not explicitly mentioned in these documents. However, the Board found that because the claimed subject-matter was a process for the production of a product, the stated purpose or effect was not a limiting feature. As a result, the Board concluded that claim 1 lacked novelty. Conflicting case law? The Patentee requested a referral to the EBA, arguing that the Board of Appeal's approach to claim construction represented a deviation from G 2/88. However, the Board of Appeal rejected this request on the basis that the teaching of G 2/88 was limited to true use claims, and that it had therefore properly applied the decision. The Board of Appeal also cited a number of previous decisions, including T 1855/06, T 304/08, T 1179/07, T 684/02, that had also highlighted the limited applicability of G 2/88 and G 6/88.  Interestingly, the Board of Appeal nonetheless acknowledged divergent case law on the issue. In its reasoning, the Board of Appeal explicitly disagreed with decisions T 0062/02 and T 1011/04, which had interpreted similar claims in the sense of G 2/88. Addressing this disagreement head-on, the Board of Appeal in the present case explained that T 0062/02 and T 1011/04 contradicted the established case law. A critical failing of these earlier decisions, according to the Board of Appeal, was their lack of reasoning regarding the distinction between use claims and process claims under Article 64(2) EPC. For the Board of Appeal, these previous decisions did not address why the technical effect recited in the claims should be considered a functional feature when that effect related to a property of the product rather than to the use itself.  Final thoughts The decision in T 1913/21 provides further clarification on the distinction in the novelty assessment between non-medical use claims and process claims. In its decision, the Board of Appeal made it clear that the format of a claim, and particularly whether or not it includes the word "use", is not determinative. What matters is the technical subject-matter claimed. This case thus confirms that the mere drafting of a claim as a "use" claim cannot circumvent the fact that when the claim defines a production process for a product, the claim will be considered a process claim. Therefore, even when a technical effect of a compound is inextricably linked to a production process, the EPO is still likely to treat such a claim as a process claim and not a use claim, regardless of the claim format. Antibody manufacturing patents can be valuable if they protect a generally applicable method that is adopted by the industry. However, process patents also have significant drawbacks, given that competitors may be able to easily design around process claims or use the method without this being readily apparent to the patentee. The patentee in the present case faced the even more fundamental problem that the antibody manufacturing process they were seeking to protect involved a compound already commonly used in antibody manufacture. The method was therefore considered inherently disclosed by the prior art methods, despite the identification of a new technical effect of the compound and the "use" format of the claim. Further reading How do you determine the novelty of a second (non-medical) use claim? (T 1395/15) (Feb 2020) The benefits and pitfalls of drug manufacturing IP (T 2543/22) (Feb 2025) Beyond the process: Securing robust IP protection for cell therapies (March 2025)

The Oktoberfest in Munich is not just the world’s largest festival: its name has also become very popular in other countries. There are Bavarian-themed festivals around the world named ‘Oktoberfest’. As a consequence of this development, the term has become descriptive for such festivals and related goods and services. The Board of Appeal (‘BoA’) of the European Union Intellectual Property Office (‘EUIPO’) confirmed the rejection of the word mark ‘Oktoberfest’ for services in class 43 (R1840/2019-4). This also has consequences for the assessment of conflicts between trade marks containing the word ‘Oktoberfest’ as a recent decision of the BoA shows. Background On 12 August 2022, the Landeshauptstadt München (‘City of Munich’) filed for registration of EU trade mark no. 018746723 covering, inter alia, the following services in class 41: “Provision of food and drink; Restaurants; Catering services; Hotel services; Lodging and boarding services; Hotel and temporary accommodation reservations”. FCRB IMPEX SRL (‘FCRB’) filed an opposition based on the Romanian national trade mark no. 100545 for the following sign: It was registered in 2009 for “food services, restaurants and catering, fast food outlets; temporary accommodation services, bars, pubs and clubs” in class 43. The EUIPO’s Opposition Division denied a likelihood of confusion (Art. 8(1)(b) EUTMR) and rejected the opposition. FCRB appealed. The Board of Appeal’s decision The EUIPO’s Board of Appeal (‘BoA’) dismissed the appeal (case R1264/2024-2). Although the City of Munich requested FCRB to establish genuine use of the earlier mark, the BoA assumed that genuine use had been proved for all services. On that basis, the services were found to be identical. The relevant public was considered to be the Romanian general public. Similarity of the signs In the assessment of the similarity of the signs, the Board found that the verbal elements ‘OKTOBER FEST’ and ‘Oktoberfest’, respectively, would be understood by the relevant public as referring to the traditional annual autumn (beer) festival in Munich. The term also referred to any similar autumn festival because nowadays, the festival is highly exploited commercially and referenced by its original name. Moreover, Oktoberfest festivals are also organised at a local level outside Germany. Consequently, consumers in Romania were considered to be also familiar with the concept and use of the words ‘OKTOBER FEST’ and ‘Oktoberfest’. As a consequence, the verbal elements in the conflicting signs were found to have at best a very low distinctiveness for the services related to the provision of food and drinks. Further, the words ‘PUB’ and ‘MUNCHEN’ would also be understood by the Romanian public as descriptive and devoid of distinctive character. The picture of a beer mug with wings was deemed to be distinctive overall despite the allusive nature of the element. The ‘flying beer mug’ would also attract the consumer’s attention because of its size and central position. Therefore, it was found to dominate the overall impression. The figurative element in the contested application was considered to be of average distinctive character. It could be perceived as a highly stylized letter ‘O’. Considering that the trade marks only coincided in the non-distinctive element ‘OKTOBER FEST’/’Oktoberfest’ and the fact that both signs contained additional and more distinctive elements, the BoA held that the signs were visually similar to a low degree. Likewise, the coincidence in the word ‘OKTOBER FEST’/’Oktoberfest’ only led to an at most low degree of phonetic similarity. The words ‘PUB’ and ‘MUNCHEN’ are obviously completely different. Conceptually, the word ‘OKTOBER FEST’/’Oktoberfest’ would evoke a concept but it was not deemed sufficient to establish a relevant conceptual similarity because this element was afforded at best a low degree of distinctiveness. Further, the public’s attention would be attracted by the signs’ additional elements that convey different concepts capable of differentiating the marks to a certain extent. It followed that the conceptual similarity was at most low. Distinctiveness of the earlier mark FCRB claimed that the earlier mark enjoyed an increased degree of distinctiveness due to intensive use. The Oktoberfest Pub, FCRB claimed, was a landmark location in Bucharest (Romania). The Board recalled that the EUIPO must examine the inherent distinctiveness of the earlier mark of its own motion. However, the enhanced distinctive character of the earlier mark constitutes a matter of fact, which is for the parties to present by means of solid and objective evidence. The existence of a higher-than-normal level of distinctiveness as a result of the public’s recognition of a mark presupposes that at least a significant part of the relevant public is familiar with it, but not necessarily that it has a reputation within the meaning of Art. 8(5) EUTMR. The evidence submitted by FCRB referred to the words ‘Oktoberfest Pub’ as the name of a bar in Bucharest only and did not depict the figurative element of a flying beer mug. Copies of invoices, contracts with third parties, balance sheets, financial statements and collaboration agreements with third parties did not reproduce the earlier mark. The evidence was deemed insufficient to conclude whether a significant part of the relevant public identified the services as originating from FCRB. The documents did not make it possible to extract information about the trade mark awareness, market share, or the position the mark occupied on the market. The Board emphasized that evidence such as opinion polls, market research, declarations from professional associations and the market share were of significant importance for determining enhanced distinctiveness. Therefore, the overall inherent distinctiveness of the earlier mark was deemed to be average. Likelihood of confusion In assessing the likelihood of confusion, the BoA referred to the interdependence principle of the relevant factors. The Board also recalled that excessive protection may not be given to elements that have a very weak or no distinctive character. Therefore, the coincidence in an element that has a weak or no distinctive character does not often lead to a finding of a likelihood of confusion. Considering that the common element ‘OKTOBER FEST’/‘Oktoberfest’, respectively, was deemed to be weakly distinctive at best, the Board held that the differences between the signs were sufficiently pronounced to exclude a likelihood of confusion. Comment The decision continues the strict case law on weakly or non-distinctive elements. Identity or similarity in such elements is unlikely to lead to a likelihood of confusion, unless an enhanced degree of distinctiveness of these elements or the entire earlier mark can be claimed. In order to invoke increased distinctiveness, it must be shown that the trade mark as registered has been used intensively for specific goods/services. While evidence such as invoices, contracts, balance sheets and financial statements are helpful to establish genuine use of a trade mark, they are generally insufficient to show that the public is familiar with the trade mark. Properly conducted market surveys, a notable market share, significant press coverage and declarations from professional associations about the perception of the trade mark should be submitted instead.

A recent EPO Board of Appeal decision considered the patentability of human-animal chimeras and where the line should be drawn on moral acceptability (T 1553/22).  The Board of Appeal found that the invention in question was an offence against "human dignity" given that the scope of the claims included scenarios in which human cells could integrate into the the brain or germ-line of the chimeric animals specified in the claims. The decision provides important guidance on how the morality exclusion under Article 53(a) EPC should be interpreted in the context of biotechnological inventions involving human-animal chimeras. Moral jeopardy of stem cell technologies  The patent application at issue in T 1553/22 related to methods for producing human-pig chimeras designed to generate humanised blood vessels and blood cells for therapeutic applications (EP16759528.9, Regents of the University of Minnesota). The claimed method involved creating gene-edited pig embryos lacking a gene essential for blood vessel and blood cell development (ETV2 gene). The modified pig embryos could then serve as hosts for human stem cells, which could go on to create human blood and blood vessel components within the pig. The application as filed included data demonstrating the successful deletion of ETV2 in pig embryos, integration of human pluripotent stem cells (PSCs) into the pig embryo and the formation of humanised blood vessels in the developing chimeric embryos.  In the application as filed, the applicant proposed that the invention would help address the critical shortage of organs for transplantation by providing a source of humanised tissues that could match a patient's genetic makeup. The system could, for example, generate human blood vessels for transplantation, provide human blood cells for treating various blood disorders, serve as a platform for studying human blood vessel development, and create animal models for testing drugs that affect blood vessels. Legal Background: Protecting human dignity  Article 53(a) EPC excludes from patentability "inventions the commercial exploitation of which would be contrary to 'ordre public' or morality." Article 53(a) EPC is supplemented by Rule 28(1) EPC, which provides a non-exhaustive list of excluded inventions, including processes for cloning human beings, modifying the human germ line, and using human embryos for commercial purposes. Additionally, Recital 38 of the EU Biotech Directive (Directive 98/44/EC) (which provides supplementary means of interpretation under Rule 26(1) EPC) specifically states that "processes, the use of which offend against human dignity, such as processes to produce chimeras from germ cells or totipotent cells of humans and animals, are obviously also excluded from patentability". The interpretation of Article 53 EPC has been the subject of several referrals to the Enlarged Board of Appeal (EBA), including G 2/06 (WARF/Stem cells) and G 2/12 (Tomatoes II/Broccoli II). Both of these decisions emphasised that exclusions from patentability must be interpreted in light of their object and purpose, rather than by automatically applying a narrow interpretation of the legal text.  The patentability of human-pig chimeras The patent application (EP16759528.9, Regents of the University of Minnesota) related to methods of producing pig-human chimeric animals expressing humanised vasculature and blood. The claims at issue on appeal specifically related to a chimeric non-human cells expressing the human protein ETV2 and a chimeric non-human animal expressing containing human blood cells. On appeal from the decision of the Examining Division to refuse the application, the applicant argued that, since the claimed invention used pluripotent rather than totipotent stem cells, it fell outside the specific exclusion in Recital 38 of the EU Biotech Directive.  Pluripotent and totipotent cells differ in their developmental potential and stage at which they appear during embryo development. Totipotent cells are found in the very early embryo and have the potential to generate all cell types in an organism, including both embryonic tissues and extraembryonic tissues (such as the placenta). In other words, a totipotent stem cell has the capacity to create an entire organism. In contrast to totipotent cells, pluripotent stem cells appear slightly later in development. Whilst pluripotent cells can give rise to all cell types within the embryo, they cannot form extraembryonic tissues, including the placenta and its supporting tissue. This means they can generate any cell type in the adult body but cannot alone create a complete organism since they cannot form the placenta. In other words, totipotent cells can form all cell types including both the embryo and its supporting structures, whilst pluripotent cells can form most cell types but specifically those within the embryo itself. Chimeric totipotent cells, capable of producing an entirely new organism in full, therefore represent a greater moral hazard than pluripotent stem cells.  The Board of Appeal decision Kat-pigFollowing the approach of the EBA on issues of patentability exclusions, the Board of Appeal first established that, whilst Recital 38 of the EU Biotech Directive specifically related to chimeras produced from totipotent cells, its underlying rationale could extend to other types of chimeras where similar ethical concerns arise. According to the Board of Appeal "the reason why the chimeras identified in Recital 38 are regarded as offensive against human dignity is due to concerns that, in chimeras including human germ cells or totipotent cells, these human cells may integrate into the brain and/or develop into germ cells and result in a chimera with human or human-like capabilities" (r. 22). Therefore, for the Board of Appeal, "if an invention relates to a situation where human cells might integrate into the chimera's brain, potentially giving the chimera human-like cognitive or behavioural qualities, or into its germ line, potentially giving it the ability to pass on humanised traits", the Board of Appeal considered the underlying rationale of Recital 38 of the Directive would be relevant.  The Board of Appeal was also convinced by evidence that such concerns were not merely hypothetical. The Board of Appeal noted scientific evidence that pluripotent stem cells could contribute to the development of tissues including neural cells or germ cells within chimeras. Crucially for the Board of Appeal, the claims at issue also did not include any technical features that would prevent the human cells introduced into the pig embryo from integrating into the brain or germ cells of the chimeric animals. The Board further found that the benefits to society of the potential therapeutic applications of the invention were not sufficient to overcome the moral hazard. Final Thoughts In T 1553/22, the Board of Appeal provided an outline for assessing chimeric stem cell inventions under Article 53(a) EPC. The Board particularly emphasised that the morality exclusion to patentability extends beyond the specific examples mentioned in Recital 38 of the EU Biotech Directive to encompass situations where similar ethical concerns arise. The decision is also notable for its adherence to the "object and purpose" approach to interpreting exclusions from patentability. The Board of Appeal explicitly rejected the argument that the exclusions provided for in the EPC and EU Biotech Directive should be interpreted narrowly, citing G 2/12 and emphasising that such interpretation must be guided by the underlying purpose of the provision. This case is also a reminder that, for inventions that risk crossing the line of moral unacceptability, careful claim drafting is key. It is crucial for applicants to ensure that the application as filed contains sufficient basis for specifically exclusion of unwanted scenarios. For example, when drafting claims involving human-animal chimeras, attention must be paid to including technical features that would prevent human cells from integrating into "ethically sensitive" tissues such as the brain and germ-line cells that might give rise to a chimera with human or human-like capabilities. The decision also raises interesting questions about the relationship between patent law, regulatory approval and medical advances. While the Board acknowledged the potential medical benefits of the invention in question, they also made it clear that such considerations cannot override fundamental ethical lines encoded into European patent law to preserve human dignity.  The decision in T 1553/22 therefore makes an interesting contrast to another recent decision in which a moral issue (in this case the morality of an invention derived from traditional remedies by dishonest means), was not considered to be in the purview of the EPO (IPKat).  Further reading The morality (and patentability) of inventions derived by immoral means (T 2510/18) (Oct 2024) Image credit: Midjourney

Uh oh... With the chill in the air, the AmeriKat thought it was a good time to refresh the other chilling sensation - re-establishing rights when you miss EPO procedural time limits.  At the helm to steer you through these icy waters is KatFriend, Ian Jones at GJE in London who explains how get to warm, dry land.   Over to Ian: "The European Patent Office’s (EPO) re-establishment of rights procedure offers a vital safety net for applicants and patentees who fail to meet procedural time limits. A recent Board of Appeal decision (T 0178/23) provides practical guidance on the availability of this remedy, and the necessity of substantiating requests within the prescribed timeframe. Background The case revolves around a European patent being granted without accompanying drawings that had been part of the originally filed application. Neither the applicant nor the EPO’s Examining Division identified the omission at the grant stage. By a decision of 25 August 2022, a patent was granted on 21 September 2022 based upon a set of claims and a description, however, it was only during the national validation stage that the issue of missing drawings surfaced on 5 January 2023. On 23 January 2023, a notice of appeal was filed against the decision to grant a patent, together with a statement of grounds and a request that the case be remitted to the first instance and a patent be granted with the drawings. This request was outside both the two-month period for appealing the decision to grant a patent, and the four-month period for providing the associated facts and arguments supporting the appeal. The EPO replied on 14 February 2023 noting that a loss of rights had occurred and indicating that the notice of appeal was late and so the appeal was deemed not to have been filed. The would-be appellant requested re-establishment of rights on 2 March 2023 asserting that the “all due care” criterion had been met. On 8 May 2024, the Board expressed its preliminary opinion that the request for re-establishment had not been substantiated, the appellant had not been “unable” to observe the appeal time limit, and that all due care required by the circumstances appeared not to have been taken. As such, the opinion surmised that the re-establishment request should be inadmissible, and the appeal deemed not to have been filed. The appellant responded on 1 October 2024 by providing additional information to add to the request for re-establishment. Oral proceedings took place 10 days later, on 11 October 2024, at which the Board upheld its preliminary opinion and found the request for re-establishment inadmissible. Key findings 1. Re-establishment of rights is available only if you are “unable” to observe a time limit The Board has clarified that for re-establishment of rights to be available, a party must be unable to meet a time limit, and not merely unaware of the need to do so. In this regard, the term “unable” implies an objective fact or obstacle preventing the required action. In the present case, the proprietor (or its representative) would have been aware of the two-month time limit to file an appeal, however, they appear not to have been aware that an appeal was required. Re-establishment of rights would not typically be available in this scenario. Contrast this with the situation in which the proprietor knew about the missing drawings ahead of time, but the appeal deadline was missed because it was incorrectly added to a record system. In this case, the proprietor is aware of the need to file an appeal but may be "unable" to observe the time limit due to an external obstacle, i.e. the incorrect date in the records system, and re-establishment may be an available remedy. The Board established that the proprietor could have filed an appeal in time but were not aware of the need to do so, and so the request for re-establishment of rights was deemed inadmissible. This rendered moot the question of whether “all due care” was exhibited. 2. Fully substantiate a request for re-establishment of rights A request for re-establishment must state the grounds on which it is based and set out the facts on which it relies by the end of the time limit for doing so. This is within two months of the removal of the cause of non-compliance, and within one year of the missed time limit. If the grounds are not substantiated by that time, then the request is likely to be found inadmissible. Further submissions may offer evidence clarifying the facts that have already been provided, however, anything that alters the basis for the original request will not be considered. In the present case, the original request for re-establishment was deemed not to provide any core facts that made it possible to consider whether all due care had been taken. The proprietor’s statement was essentially that all due care had been taken as they “were unable to observe the time limit to appeal, since [they] were unaware of the missing drawings”. The Board indicated that this was not enough to enable correct consideration of the matter. It was not until the appellant’s 1 October 2024 submission that the facts surrounding the missed appeal time limit were disclosed. At this point, it was too late to make a conclusive case. This led to the request for re-establishment also being inadmissible based on the case not being substantiated in time. It is imperative that the case for re-establishment of rights is set out in full within the initial period for making the request. This balances the right of a proprietor to have sufficient time to correctly establish the chain of events that led to the loss of rights, while reducing the period of uncertainty for third parties. 3. Pay a re-establishment fee for each missed time limit (and request a refund, if available) Two different time limits were missed. These were the two-month deadline to file an appeal (4 November 2022), and the four-month deadline to file a statement setting out the grounds of appeal (4 January 2023). Each time limit expires independently of the other despite being calculated from the same event, i.e. the notification of grant. Sadly, the Board did not decide how many re-establishment fees were due as the request was inadmissible. There is some case law supporting a single re-establishment fee being sufficient in this case as both events must be considered together. However, a more risk averse party may decide to pay a re-establishment fee for each missed event and request a refund, if available. The decision in T 0178/23 provides a cautionary tale and valuable guidance for practitioners in relation to the limited availability of re-establishment of rights at the EPO, together with the stringent requirements and timeframe for substantiating such a request."

Many famous brands do not only use word marks but also figurative marks. The question often is: How famous is the figurative mark on its own? This can be challenging to prove as the following case concerning LANCÔME’s rose device shows. Background On 21 April 2022, Guangzhou Ya Ti Ao Jia Cosmetics Co., Ltd filed for registration of EU trade mark no. 018689867 covering various cosmetic products in Nice class 3. L’Oréal filed an opposition on the basis of four EU trade marks: · EU trade mark no. 002494557 (‘earlier mark 1’): · EU trade mark no. 017972324 (‘earlier mark 2’): · EU trade mark no. 017972718 (‘earlier mark 3’): · EU trade mark no. 016872971 (‘earlier mark 4’): All earlier trade marks were registered in class 3 for various cosmetic products. L’Oréal invoked a likelihood of confusion (Art. 8(1)(b) EUTMR) and detriment to the reputation of its trade marks (Art. 8(5) EUTMR). The Opposition Division of the European Union Intellectual Property Office (‘EUIPO’) rejected the Opposition. L’Oréal appealed to the Board of Appeal of the EUIPO (‘BoA’). The Board of Appeal’s decision The BoA dismissed the appeal (case R1839/2023-5). The relevant public was held to be that of the EU with an average level of attention. The goods were considered to be identical or similar. Similarity of the signs The BoA limited its detailed assessment of the similarity of the signs to the earlier marks 1 and 2 as they were most similar to the contested application: The word element ‘ARTÍSCARE’ in the contested trade mark was considered to be more dominant due to its size and to have an average degree of distinctiveness because it had no meaning. The BoA found that earlier mark 1 consisted of a single device, which did not have distinctive or dominant elements. In earlier mark 2, the word ‘LANCÔME’ was meaningless and therefore distinctive. The words ‘ROSE JELLY MASK’ were deemed to be non-distinctive or weakly distinctive for the English-speaking public. The BoA found the common element of a rose to be weakly distinctive, as it would be perceived as a reference to the smell, the colour or an ingredient of the relevant goods. Rose blossom scent is used frequently as a smell for perfumes, cosmetics and beauty care products. Rose is also a shade of colour, which some cosmetics and beauty care products might have. Further, the BoA applied the principle that words usually have a stronger impact on consumers than figurative elements. Due to the weak distinctiveness of the rose devices and the different words, the BoA found that the contested application was visually similar to a low degree to earlier mark 1 and to a very low degree to earlier mark 2. An aural comparison was not possible with respect to earlier mark 1 as it did not contain verbal elements. Earlier mark 2 and the contested application were deemed to be aurally dissimilar because they had no word in common. Conceptually, both marks would be associated with the concept of a rose. Due to the weakly distinctive character of this concept for the goods, the BoA found a low degree of conceptual similarity to exist. Distinctiveness/reputation The decisive question was whether L’Oréal’s rose device enjoyed an increased degree of distinctiveness on account of its intensive use. L’Oréal submitted, inter alia, the following items of evidence: Several rankings of the most valuable brands in the world for various years, showing that ‘Lancôme’ was in the top 100 overall and among the top 10 in the cosmetics sector. The BoA did not find this convincing because the rankings depicted word and figurative marks for several brands, e.g. as follows, but only showed the word mark ‘Lancôme’ and not the rose device. The BoA also excluded that the rose device benefited from the reputation of the word mark because of the former’s weak distinctiveness. Several awards won by L’Oréal or ‘Lancôme’, which, however, did not show the rose device. A declaration of a legal counsel from the L’Oréal group with information on sales was disregarded by the BoA because it did not make reference to the earlier mark 1 and the information was not broken down by the different products sold with the rose device. Online articles, articles from magazines and Wikipedia were rejected because they did not show the rose either but only referred to L’Oréal or ‘Lancôme’. Additionally, the articles did not describe the rose device as a trade mark belonging to L’Oréal. Articles reporting that the rose has been an emblematic symbol of ‘Lancôme’ showed different representations of roses, such as: They were not considered to be sufficient to establish enhanced distinctiveness of the earlier mark 1 as they either contain the word ‘Lancôme’ or show different rose symbols. Online searches for ‘LOGO ROSA LANCOME’ and similar terms were disregarded because the search for ‘LANCOME’ limited the results to those from L’Oréal. The BoA concluded that the evidence showed some use of the earlier mark 1 but was not sufficient to establish an increased level of distinctiveness or reputation. The BoA applied similar considerations to earlier mark 2. Most of the evidence referred to ‘LANCÔME’ and it was not clear whether that word was always used together with the rose device, or to which extent that combination was present on the market. Likelihood of confusion Turning to the determination of the likelihood of confusion, the BoA recalled that overprotection of inherently weak marks and weak elements of marks should be avoided. Excessive protection of signs with a weak distinctive character could adversely affect the objectives pursued by trade mark law, if the mere presence of weak elements led to a finding of a likelihood of confusion. For this reason, the BoA found that a likelihood of confusion cannot be based on the rose device as it is weakly distinctive or even non-distinctive, also taking into account the distinctive word element ‘ArtÍscare’ in the contested application. A similar reasoning was applied to the assessment of the likelihood of confusion vis-à-vis earlier marks 3 and 4. No series of marks L’Oréal relied on a series (also called a family) of trade marks. The BoA accepted that several earlier marks can be regarded as a single series, which may give rise to a likelihood of confusion by creating the possibility of association between the contested trade mark and the series. This requires: (1) Proof of use of at least three marks belonging to a series of marks. (2) The contested trade mark need not only be similar to the series, but must also display characteristics capable of associating it with the series. This association must lead the public to believe that the contested trade mark is also part of the series. Due to the weak distinctive character of the rose device and the differing words ‘ARTÍSCARE’ in the contested trade mark and ‘LANCÔME’ in earlier marks 2 and 3, the BoA found that the characteristics of the contested sign are not capable of associating it with any of the four earlier marks. Trade mark with a reputation While the BoA found that the word ‘LANCÔME’ enjoys a certain reputation, it did not deem the evidence submitted by L’Oréal to be sufficient to establish a reputation of any of the four earlier trade marks. Even accepting a very low degree of reputation of the earlier marks 2 and 3 (which contain the word ‘LANCÔME’), the BoA excluded that the public would establish a link between the marks because of the weak distinctiveness of the rose device and the lack of a likelihood of confusion. For the sake of completeness, the BoA explained that the contested application did not cause detriment to earlier marks 2 and 3. The low degree of (a presumed) reputation, the low degree of inherent distinctiveness of the rose device, the (very) low degree of similarity between the signs and the absence of a likelihood of confusion spoke against unfair advantage being taken of, or detriment caused to the distinctive character or repute of the earlier marks. Comment The decision shows how difficult it can be to establish an increased level of distinctiveness of a descriptive sign. Even using it in combination with a well-known trade mark is not sufficient. The most important piece of evidence to convince the EUIPO of increased distinctiveness might be a properly conducted survey concerning the public’s perception of the sign as a source indicator. It would be sufficient to conduct the survey in one Member State of the EU (e.g. France) because an opposition will be successful if a likelihood of confusion exists in a (non-insignificant) part of the EU, such as a single Member State. Likewise, for an EU trade mark to enjoy a reputation in the entire EU, it is enough to establish the reputation in a substantial part, which can also mean a single Member State (see the Iron & Smith judgment, IPKat here).

Sound marks that can serve as jingles are difficult to protect in the EU. The registration practice seems inconsistent. Some jingles get registered while others are rejected although they appear to be equally ‘complex’. The relatively short jingle of a public transportation company had been rejected by the European Union Intellectual Property Office (‘EUIPO’) not too long ago (IPKat here). The Board of Appeal of the EUIPO (‘BoA’) recently confirmed the rejection. Background On 15 March 2023, Berliner Verkehrsbetriebe (‘BVG’, the company operating the public transportation system in Berlin), applied for a two-second long sound mark as an EU trade mark (no. 018849003; you can listen to the sound file here). Registration was sought for the following services in class 39: ‘Transportation; passenger transport; packaging of goods; storage of goods; organization of trips’. The EUIPO rejected the application due to lack of distinctiveness (Art. 7(1)(b) EUTMR). It argued that the general public is not used to sounds indicating the commercial origin of goods and services. The sign in question did not have the required resonance, which enables the relevant consumer to perceive and regard it as a trade mark and not as a functional element or as an indicator without any inherent characteristics. The sound was considered to consist of a banal melody, which is too short, not sufficiently memorable and quite monotonous. The examiner also found that jingles are common in the transport sector. They precede or end announcements and are meant to increase the attention of the public but not to indicate the commercial origin. The Board of Appeal’s decision BVG’s appeal was dismissed (case R2220-2023-5). The BoA agreed with the standard applied by the EUIPO in order to assess the distinctive character of the sound mark. While the criteria are identical for all categories of trade marks, the relevant public’s perception is not necessarily the same for each of those categories. It may prove more difficult to establish the distinctiveness of certain types of marks. This is particularly true for sound marks. They must have a certain resonance, which allows consumers to perceive the sound as a trade mark and not just, e.g., as a functional element. The BoA found that the average consumer in the EU is relevant because the sound does not contain any text that would be understood in certain Member States only. Further, there is no indication that the sound will be perceived differently in particular parts of the EU. The BoA held that the two-second long sound in question consist of four perceivable notes, which it considered to be too short to have the necessary resonance or memorability. Moreover, according to the BoA, it is a well-known fact that loudspeaker announcements in train stations, airports etc. are commonly preceded by a jingle in order to capture the attention of travelers in these often noisy environments. Therefore, the sound merely has a functional purpose for the services ‘transportation; passenger transport’. As regards ‘packaging of goods; storage of goods; organization of trips’, the BoA held that the sound indicates certain aspects of the services (e.g. the beginning of an announcement) or that it will be used in the advertisement therefor. BVG argued that the jingle represents the cosmopolitanism and diversity of the city of Berlin. The BoA found that the relevant public is not aware of this fact and will not analyse the sound to figure out its meaning. BVG also referred to jingles of other companies in the transport sector, such as those of the Munich Airport, SNCF and Deutsche Bahn, and contended that the sound mark applied for deviates from these sounds. The BoA responded that mere deviation from existing sounds is not sufficient to confer distinctiveness on the application. Comment The decision confirms the difficulties of registering sounds and jingles. Even though the General Court held that the case law on three-dimensional trade marks representing (part of) the goods does not apply to sound marks (case T-668/19 at paras. 29 et seqq.), the result is the same because the premise is identical for both types of marks: consumers are not used to infer the commercial origin of goods and services from these signs. As a consequence, special circumstances must exist to register a sound mark. Besides acquired distinctiveness (Art. 7(3) EUTMR), the case law mentions a ‘certain resonance’. This is a rather vague concept but seems to be akin to the requirement of ‘significant departure from the standard and customs in the relevant sector’ applied to three-dimensional trade marks representing (parts of) the goods (e.g. case C-417/16 P at para. 35). The picture is by cottonbro studio and used under the licensing terms of pexels.com.

When an earlier sign consists of two words and the later mark consists of the same two words but in reversed order, the German Federal Patent Court calls this an ‘anagrammatic sound rotation’ (‘anagrammatische Klangrotation’). The rationale is that consumers are unlikely to remember the order of words due to their imperfect recollection (e.g. case 29 W (pat) 47/16). In two recent decisions, the General Court and the Board of Appeal (‘BoA’) of the European Union Intellectual Property Office (‘EUIPO’) found instead that the inversion of words does not lead a likelihood of confusion when the words have a low degree of distinctiveness. Paris Bar v Bar Paris Background On 28 June 2019, Superstudio 21 GmbH filed an application for registration of EU trade mark no. 018088718 for the following sign: It covered foodstuffs in classes 29 and 30 as well as restaurant services in class 43. Kantstraße Paris Bar GmbH filed an opposition based on German trade mark no. 39739738 for the following sign: This trade mark covered provision of food and drink as well as accommodation services in class 43. The EUIPO’s Opposition Division upheld the opposition. The BoA annulled the decision and rejected the opposition. The General Court’s decision The General Court dismissed the opponent’s appeal (case T-117/23). Since the earlier right was a German trade mark, the relevant German public was considered to have an average level of attention and the goods and services were deemed identical or similar. As regards the similarity of the signs and their distinctive and dominant elements, the General Court held that the relevant consumers would understand the signs to denote a bar named ‘Paris’, suggesting that the bar is decorated in a particular Parisian style. The city of Paris enjoys a worldwide reputation for its gastronomy and culture. The vagueness of the concept of a Parisian-style bar does not prevent the words ‘Paris Bar’ and ‘Bar Paris’ from being descriptive. Therefore, the judges found the word elements of both signs to be lowly distinctive for all goods and services. None of them dominated the overall impression of the marks. The figurative element in the contested application representing a Gallic cock – a symbol closely connected with France and Paris – was deemed to be as distinctive and dominant as the word elements. On that basis, the General Court confirmed the BoA’s finding that the signs are visually similar to a low degree on account of the inversed order of the words, their weak distinctiveness and the additional graphical elements of the contested application. Phonetically, the General Court considered the signs to be highly similar, unlike the BoA, which found only an average degree. The word elements will be pronounced identically. The reversed order of the words does not result in a different meaning. Taking the imperfect recollection of consumers into account, the order of the words does not play a decisive role. The conceptual similarity could be considered high due to the common concept of a Parisian-style bar. However, the low distinctiveness of the word elements caused the General Court to hold that the conceptual similarity has a very limited impact on the likelihood of confusion without stating the level of conceptual similarity. The Court confirmed the BoA’s finding that the inherent distinctiveness of the earlier mark is very low. The opponent’s claim of increased distinctiveness due to intensive use was rejected because of insufficient evidence relating to one single bar in Berlin. As regards the likelihood of confusion, the General Court took the marketing conditions of the specific goods and services into account. The judges agreed with the opponent that oral recommendations and radio ads are important for marketing foodstuffs and restaurant services. Likewise, restaurant and travel guides as well as newspaper articles do not necessarily reproduce figurative marks but only their word elements. However, the judges found that, when buying foodstuffs and visiting restaurants, consumers will perceive the marks predominately visually. Further, the visual similarities are based on the very lowly distinctive word elements, which is why visual differences between the signs play a more important role. These differences allow the relevant public to distinguish the signs. For these reasons, the General Court denied a likelihood of confusion. ZERO MEAT v MEAT ZERO Background On 29 September 2021, CPF Food and Beverage Co., Ltd. (‘CPF’) applied for EU trade mark no. 018568780 for various meat substitutes in class 29 and the following sign: Norma Lebensmittelfilialbetrieb Stiftung & Co. KG (‘Norma’) filed an opposition on the basis of International Registration no. 1546416 (designating the Czech Republic, France and Austria) and German trade mark no. 302020102414 for various foodstuffs in classes 29 and 30 both covering the following sign: The Opposition Division of the EUIPO upheld the opposition because of a likelihood of confusion. CPF appealed. The Board of Appeal’s decision The BoA annulled the EUIPO’s decision and rejected the opposition (case R 2052/2023-2). The relevant public consists of the general public with an average level of attention. Meat substitutes were found to be relatively inexpensive and purchased on a daily basis. Geographically, the relevant public is composed of the average consumers of the Czech Republic, Germany, France and Austria. The BoA considered the goods to be identical. With respect to the distinctive and dominant elements of the signs, the BoA found that the words ‘zero’ and ‘meat’ are part of the basic English vocabulary, which will be understood throughout the EU. The BoA supported this argument with respect to ‘meat’ by reference to the Cambridge Learner’s Dictionary, in which this term is classified under the A1 (Basic User) level of English, which corresponds to the basic level of English according to the Common European Framework of Reference for Languages (CEFR). Since ‘zero’ and ‘meat’ are descriptive for the relevant goods, they are not distinctive and dominant elements of the signs. The BoA considered the colour green used in both marks to allude to the ecological or environmentally friendly nature of the products. The figurative elements in both marks were also not considered as particularly striking. Thus, the verbal and figurative elements contribute equally to the overall impression. Visually, the BoA found the signs to be similar to a low degree. The earlier mark is made up of one word, the contested application has two words and the additional numeral ‘0’. Further, the (weakly distinctive) words are in reverse order. The BoA held that the figurative elements also contribute to a different overall impression. Even the shades of green in the signs were considered to be very different. Phonetically, the BoA held that the figurative elements and the additional number in the contested application will not be pronounced. The identical words ‘meat’ and ‘zero’ were considered to have a limited impact because of their descriptiveness. In addition, consumers were deemed to be aware of the fact that the identical verbal elements do not appear in the same order. The BoA concluded that the phonetic similarity is slightly below average. Conceptually, both signs refer to products that are free of meat and ecological or environmentally friendly. Because of the weak distinctiveness of this concept for the relevant goods, the degree of conceptual similarity was deemed to be low. The BoA held that the inherent distinctiveness of the earlier marks is below average on account of the descriptiveness of the words and because the figurative elements are not particularly striking. In the assessment of the likelihood of confusion, the BoA found that, due to the non-distinctive character of ‘ZERO’ and ‘MEAT’, the attention of the relevant public would focus more on the elements that differentiate the signs at issue, namely the different layout, the different shades of green, the graphic components and the stylized numeral ‘0’ in the contested sign. The BoA also mentioned that it would be against the rationale of the EUTMR to grant excessive protection over non-distinctive elements. Moreover, the BoA considered the visual similarity to be more important because food products are normally purchased directly in supermarkets where consumers lose little time between successive purchases and often do not read all the information on the various products, letting themselves be guided more by the overall visual impression produced by the labels or packaging. For these reasons and despite the identical goods, the BoA excluded a likelihood of confusion. Comment Even though the reasoning of the decisions differs to some extent, the result is the same: Trade marks consisting of non-distinctive or lowly distinctive elements have a very limited scope of protection. The distinctiveness of the earlier mark becomes the decisive factor in the overall assessment of the likelihood of confusion. As I discussed in previous posts (here and here), giving the factor ‘distinctiveness of the earlier sign’ that much weight does not appear to be in line with the case of the Court of Justice of the European Union (‘CJEU’). This court should be given the opportunity to confirm or correct its case law in this respect. Since 2019, this is not as easy as it used to be because appellants need to show that an appeal to the CEJU raises an issue that is significant with respect to the unity, consistency or development of the EU law (Art. 58a of the Statute of the CJEU, Artt. 170a, 170b of the Rules of Procedure of the CJEU). The relevance of the earlier mark’s level of distinctiveness in the overall assessment of the likelihood of confusion and the potential deviation from the CJEU’s case law might just be sufficient to fulfil these conditions. The picture was created with Image Creator from Microsoft Designer.

You can probably understand the following text because of an effect called typoglycemia: Aoccdrnig to a rscheearcher at Cmabrigde Uinervtisy, it deosn't mttaer in waht oredr the ltteers in a wrod are, the olny iprmoetnt tihng is taht the frist and lsat ltteer be at the rghit pclae. The rset can be a toatl mses and you can sitll raed it wouthit porbelm. Tihs is bcuseae the huamn mnid deos not raed ervey lteter by istlef, but the wrod as a wlohe. But what about the following ‘word’? The car company HD HYUNDAI CO., LTD. (‘Hyundai’) considered the sign to resemble its well-known trade name and trade mark in lower case letters, namely ‘hyundai’. Background On 3 December 2021, Global Trade Services, Inc. (‘GTS’) filed for registration of EU trade mark no. 018615959 for the sign depicted above. Registration was sought for various goods in class 9, including ‘home security cameras; touchscreens; robots with artificial intelligence’. Hyundai filed an opposition on the basis of five national trade marks registered in Benelux, France, Italy, Spain and Portugal for the figurative mark and the word mark ‘HYUNDAI’, covering, inter alia, goods in class 9, including ‘digital cameras; digital information display [DID]’. The Opposition Division of the European Union Intellectual Property Office (‘EUIPO’) rejected the opposition. Hyundai appealed. The Board of Appeal’s decision The EUIPO’s Board of Appeal (‘BoA’) dismissed the appeal (R1147/2023-1). It held that the relevant public consists of the general public and professionals with an average to high level of attention. The BoA found the signs to be dissimilar. As regards the contested signs, consumers will not be able to perceive any letters but only vertical bars of different heights, two of which have dots. The later mark will not immediately and without any mental effort be recognised as ‘hyundai’. The sign is missing horizontal lines, which are an essential component of the normal graphic representation of the word ‘hyundai’. It is much more probable that the sign is recognised only as the combination of some basic figurative elements. Only after an in-depth analysis, which consumers do not tend to perform, might a very stylised representation of the word ‘hyundai’ be perceived. The contested mark is more likely to be understood as an abstract and unitary shape, especially because ‘hyundai’ has no obvious meaning for the goods in question, which could help consumers to identify it in the contested sign. Hyundai argued that the publication of the contested mark referenced Vienna class 27.05.25, which covers ‘letters presenting some other special form of writing’. The BoA rejected this argument because the classification does not show the perception of the relevant public. The BoA considered the fact that the contested trade mark may have been developed based on the word ‘hyundai’ to be irrelevant because the public would still have to engage in a highly imaginative cognitive process in order to decipher the sign. Likewise, any dishonest intent on the part of GTS was found to be irrelevant in opposition proceedings. Hyundai claimed that the contested sign will immediately be perceived as the word ‘hyundai’ because this trademark is the 35th most valuable brand in the world and has been used for 55 years. The BoA dismissed this argument. A lack of similarity cannot be overcome by a high level of distinctiveness. On that basis, the signs were found to be visually dissimilar. A phonetic and conceptual comparison was not possible. Therefore, the opposition failed. Comment The BoA’s decision is supported by artificial intelligence. After uploading a picture of GTS’ sign to Google’s Gemini and asking “What is the picture about?”, Gemini replied: The image you sent me appears to be a trademark image filed with the United States Patent and Trademark Office (USPTO). It depicts a blue logo on a white background, but without any additional context, it is impossible to say for certain what the logo represents or what company or organization it belongs to. […] The more leading question “Can you read a word in the picture?” resulted in the following (rather creative) response: No, I cannot read a word in the image. The logo is a stylized blue bird with its wings outstretched, facing to the right. There are no letters or words within the design itself. Highly stylised letters and words are challenging to attack and defend before the EU instances. The General Court confirmed that the top part of the following sign will not be perceived as the letters ‘IJTI’ because of their highly stylised depiction (case T‑743/18). Likewise, the sign will not be understood as ‘KIO’ but rather as an arrow pointing to the left followed by the number ‘10’ or the letters ‘IO’ (case T-67/19). Even the following sign was not considered to be perceived as ‘fly’ (case T-475/16): If you can immediately read a word in the following sign, your perception is better than that of the average consumer, according to the General Court in case T-354/20: These examples should caution branding teams (and the lawyers advising them) when creating new logos. One should not just consider whether the target consumer understands the sign without much mental effort but also if examiners at trade mark offices and judges will immediately understand it. Survey evidence might be helpful to convince the EUIPO that a sign is understood as a particular word. The BoA’s finding that the increased level of distinctiveness of the ‘Hyundai’ trademark is not decisive in the assessment of the similarity of the signs should be treated with caution. The relevant public’s familiarity with a trade mark can shape its perception and might make it easier to recognise the earlier mark in the contested sign. Therefore, an increased level of distinctiveness might be relevant when assessing the similarity of the signs.

The decision practice of the EUIPO is not always consistent. This is particularly true for weakly distinctive or even non-distinctive elements such as the word ‘team’. The applications for ‘TEAM SCOTLAND’ (EUTM no. 15143027), ‘TEAM SERBIA’ (EUTM no. 17152851) and ‘TEAM UK’ (IR designating the EU no. 1447362) have been refused. Likewise, the EUIPO refused registration of the mark ‘TEAM USA’ for typical merchandise products. The fourth Board of Appeal of EUIPO (‘BoA’), however, recently considered the sign to be inherently distinctive for merchandise (R1128/2023-4). Background On 17 February 2022, the United States Olympic and Paralympic Committee (‘USOPC’) designated the EU in its IR no. 1645605 for the sign ‘TEAM USA’. It covered various goods and services in classes 14 (including ‘ornamental pins’), 18 (including ‘backpacks; sports bags’), 21 (including ‘beer mugs; coffee mugs’) and 25 (including ‘T-shirts; caps’). The EUIPO issued a refusal of the IR based on lack of distinctiveness (Art. 7(1)(b) EUTMR). By referring to the definitions of ‘team’ and ‘USA’ in English dictionaries, the examiner held that the sign would be understood as a reference to a group of players representing the USA in a competitive game or sport. The examiner also quoted several online articles from EU websites mentioning ‘Team USA’ in reporting on US sports teams, including basketball and American football. The EUIPO found that consumers will not understand the sign ‘TEAM USA’ to indicate the commercial origin. It is a banal statement indicating that the relevant goods may be either used by a group of US players during a competition, be distributed as promotional products or sold during competitions and/or sporting events. The examiner also referred to the refusal of EUTM no. 15143027 ‘TEAM SCOTLAND’, EUTM no. 17152851 ‘TEAM SERBIA’ and IR designating the IR no. 1447362 ‘TEAM UK. The USOPC appealed.  The Board of Appeal’s decisions The BoA annulled the examiner’s decision. The registration of a sign as a trade mark does not require a certain level of creativity or artistic imagination of the applicant. Instead, the sole ability of the sign to individualise the goods of the IR holder in relation to those offered by its competitors is decisive. ‘TEAM USA’ allows consumers to distinguish the goods concerned from those of other undertakings without conducting any analytical examination and without paying particular attention. The BoA found that the expression ‘TEAM USA’ does not convey any concrete information evoking the goods in question. The examiner’s examples of online uses of ‘TEAM USA’ do not demonstrate that this expression is perceived as a non-distinctive, frequently used or banal statement for jewellery, mugs, backpacks etc. The online uses refer to the team of top players representing the USA at particular sports events. There is no general principle that excludes the names of sports teams from trade mark protection. The mark ‘TEAM USA’ is likely to be used for goods that are typical merchandising and souvenir articles, and therefore to designate that they are manufactured, marketed or supplied under the control of the USOPC, to which responsibility for their quality can be attributed. By referring to the NEUSCHWANSTEIN judgments of the CJEU (case C-488/16 P, at paras. 65 et seq.) and General Court (case T-167/15 at para. 43), the BoA found that the mere affixing of ‘TEAM USA’ on the goods in question enables those goods to be distinguished from other merchandising and souvenir articles sold or provided by other undertakings. The need to keep a certain sign free for competitors is not an interest protected under Art. 7(1)(b) EUTMR, but rather of other absolute grounds, such as Artt. 7(1)(c), (d) or (e) EUTMR. Comment The frequent references to sports and sports teams indicates that the decision has been influenced to a significant extent by the fact that the USOPC applied for registration. However, the assessment of the inherent distinctive character of a sign must be made only by reference to the goods and services and the perception of the sign in question (Henkel v OHIM, C-456/01 P at para. 35). The identity of the owner is irrelevant (cf. T‑332/20 at para. 47). Consequently, the definition of ‘TEAM USA’ used by the examiner and the Board of Appeal appears to be too narrow. A ‘team’ can not only be understood as a group of people playing sports but also as a group of people who work together at a particular job/task (see e.g. T-786/21 at paras. 28 et seqq.). Therefore, the sign could also be perceived as a reference to a group of people from the US or who are fans/supporters of the US, which produces pins, mugs, backpacks etc. It could also be understood as a reference to the people for which the goods are meant, namely for people who are fans of/support the USA. In this sense, the sign ‘TEAM USA’ either describes that a team based in the US is responsible for the goods in question or that the goods are meant for people supporting the USA. Both meanings appear to be non-distinctive. The fact that they are rather vague is not decisive (see e.g. T-81/13 at para. 20). With similar reasoning, the BoA rejected e.g. the word mark ‘Team Business IT’ for IT-related goods and services because the mark will be understand as a reference to goods and services from the business IT sector for which a team is responsible (R 2087/2020-2 at para. 21). Nevertheless, it seems that the race for ‘TEAM [COUNTRY]’ trademarks in the EU can start. Picture is by RebaSpike and used under the licensing terms of pixabay.

There are three things I always forget. Names, faces and... the third I can't remember. This quote from the Italian writer Italo Svevo could have been the motto of the EUIPO when it rejected the trade mark applications for real-life pictures of the faces of Dutch models Puck Schrover (see here) and Maartje Verhoef (see here; registered eventually). It also ‘swiped left’ on two similar trade mark applications depicting Dutch models Marlijn Hoek and Roos Abels but the Board of Appeal (‘BoA’) of EUIPO revisited the pictures and ‘swiped right’. Background On 17 October 2017, M & R Holding B.V. applied for EU trade mark no. 017355066 for the following sign: On 26 October 2017, Roos Abels Holding B.V. applied for EU trade mark no. 017393125 for the following sign: Both applications covered ‘services of mannequins and photo models for publicity or sales promotion’ in class 35 and ‘model and mannequin services for leisure or recreational purposes’ in class 41. The examiner rejected the applications for lacking distinctiveness (Art. 7(1)(b) EUTMR). He argued that the marks applied for only represent the mannequin or photo model and the images can be used for promoting the services in question. Real-life pictures of a person's face may be unique but uniqueness and distinctiveness are two different concepts. While each face is unique, it does not mean that it is immediately perceived as an indication of the commercial origin of the services. It is not unusual for mannequin and model services to be offered with an image of the person providing them. The applicants appealed. The Board of Appeal’s decisions The fourth Board of Appeal upheld the appeals. The reasoning is identical in both decisions (R1255/2023-4 and R1266/2023-4) . The Board noted that trade marks must guarantee the origin of the goods or services to the consumer. A trade mark must be able to identify the goods or services as originating from a particular undertaking, and thus to distinguish these goods or services from those of other undertakings. While the criteria for assessing the distinctive character of different categories of marks are the same, the perception of the relevant public is not necessarily the same for each of those categories, and it may be more difficult to establish the distinctive character for certain categories. The BoA confirmed the examiner’s finding that the services are directed at the general and a specialised public. It disagreed, however, with his further findings. The BoA saw no reason for holding that it is more difficult to establish the distinctive character of a person’s photograph. The marks show the faces of specific persons with their unique facial features and characteristics. Faces, like first names and surnames, identify a person and therefore distinguish them from other persons. It is irrelevant whether the person is known by name. The existence of identical twins is disregarded as an exceptional case. The BoA was not convinced of the examiner’s argument that the signs were non-distinctive because they would only be perceived as representations of the persons who provide the mannequin and model services. Instead, the signs are found to be distinctive precisely because they identify the persons who provide the services. The faces literally indicate the commercial origin of the mannequin and model services. Comment The finding of the BoA that the general public forms a part of the relevant public would have required some explanations. Do end-consumers have the need for mannequin or model services? This can be a decisive question because consumers might perceive the picture of a face differently than professionals. As regards end-consumers, it can be argued that real-life photographs of people are usually not used as indications of origin. This is especially true for pictures in the style of those applied for, i.e. a frontal view of a rather expressionless face against a neutral background. Of course, celebrities show their faces (and bodies) to endorse perfumes, watches, clothes and other consumer products. However, they are merely a means to promote the goods but do not indicate the commercial origin. Neither Chris Hemsworth nor his face become an indication of the commercial origin of Hugo Boss suits and perfumes merely because he appears in their advertising. Nobody would believe that he produced these goods or was in any other way responsible for them. Absent particular findings to the contrary, should the same apply to faces used for mannequin and model services? If you saw the picture of one of the models on the store front or the website of a company offering mannequin and model services without any (other) indication of origin like word marks, would you consider the picture to be an indication of the commercial origin? Or would you just understand it as a reference to the person providing the services (without necessarily being responsible)? Or even both? What specific features do the trade marks possess for the public to make it believe that these models are responsible for the services (i.e. as their source) and not just the people performing the services? Even if the faces can be understood as both descriptive and an indication of origin, would this be a ‘Doublemint’ situation (CJEU, case C-191/01 P)? According to settled case law, a sign with several meanings is descriptive (and non-distinctive) if one of its meanings is descriptive even if the other meanings would be distinctive. A decision from the General Court or the CJEU would be helpful to clarify the conditions for protection for these non-traditional trade marks.