Three dimensional trade mark - the shape of a loudspeaker

In 2003, Bang & Olufsen applied to protect the shape of one of its loudspeakers through a Community Trade Mark Application (CTMR) for ‘electric and electronic apparatus and appliances for analogue, digital or optical reception, processing, reproduction, regulation or distribution of sound signals, loudspeakers’ in class 1 and ‘music furniture’ in class 20.

In 2005, the examiner rejected the application on the absolute ground that the trade mark consisted exclusively of a representation of a loudspeaker and was, therefore, devoid of any distinctive character under article 7(1)(b) CTMR.

Although the First Board of Appeal (“Board”)) was of the same opinion, the Court of First Instance (CFI) overruled this decision, deciding that such a shape could fulfil the functions of a trade mark.

The CFI’s view was that the shape departed significantly from the customs of the sector and had sufficiently specific and arbitrary characteristics to draw a consumer’s attention; and an appearance which distinguished the goods covered by the trade mark application from the goods of another commercial origin.

Following CFI’s decision, examination of the trade mark resumed only for the trade mark to be refused again by the Board, this time on a different ground.

Whilst Bang & Olufsen argued that the Board was not competent to re-examine the trade mark, the Board, unsurprisingly perhaps, did not share this view.

Before a trade mark is registered, all absolute grounds for refusal must be examined and the objections based on any of these grounds can be raised at any stage of the registration proceedings.

This time the Board rejected the trade mark application on the basis of the provisions of article 7(1)(e)(iii) CTMR which states that a mark which consists exclusively of a shape that gives substantial value to the goods, shall not be registered.

The Board considered that “the shape in itself is the decisive element for the appreciation by the relevant customer, who will see in the shape a substantial value of the product” and that “the value in particular derives from its aesthetic or artistic appearance.”

According to the Board, a shape gives substantial value to a product when it determines to a large extent whether a consumer buys the product.

The Board concluded that “initial overall impression is dominated by particularities of the shape and the shape is not only perceived as an additional element. It is irrelevant that further value may come from the sound quality of the loudspeaker or the reputation of the applicant’s brand”.

This outcome does not mean that all three-dimensional signs will be automatically barred from trade mark registration.

On the contrary, Article 7(1)(e)(iii) CTMR only refuses trade mark protection for shapes in certain specific cases, namely, when the sign consists exclusively of a shape which gives substantial value to the product.

Consistent with our policy when giving comment and advice on a non-specific basis, we cannot assume legal responsibility for the
accuracy of any particular statement. In the case of specific problems we recommend that professional advice be sought.

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