General Court refuses protection to chuck device

European Union
In Schunk GmbH & Co KG Spann- und Greiftechnik v Office for Harmonization in the Internal Market (OHIM) (Case T-7/09, April 21 2010), the General Court has upheld a decision of the Board of Appeal of OHIM in which the latter had rejected a Community trademark application for the registration of a three-dimensional sign consisting of a cylindrical chuck with three grooves.

Schunk GmbH & Co KG Spann- und Greiftechnik applied to register the mark in March 2003 for goods in Classes 7 and 8 of the Nice Classification, including mechanical chucks, chucking cylinders and expansion chucks. It added a description explaining that the mark was "another trademark form" consisting of the shape of the goods for which registration was sought. According to the description, the appearance of the mark consisted of three concentric grooves embedded in the surface of the chuck. Schunk claimed that the grooves did not have a technical function. The OHIM examiner refused registration on grounds that the mark lacked distinctiveness pursuant to Article 7(1)(b) of the Community Trademark Regulation (40/94). Schunk appealed.  

In October 2008 the First Board of Appeal of OHIM rejected the appeal. It held that the shape of the mark had no particular and clearly identifiable element allowing it to be distinguished from the usual shapes available on the market or giving it the ability to indicate the commercial origin of the goods. It also refused registration under Article 7(3) of the regulation, as Schunk had failed to prove that the mark had acquired distinctiveness through use. Unsurprisingly, it added that the existence of a CTM registration for a mark consisting of a spiral groove with five complete turns on the surface of collet chucks was insufficient to change its decision.

Schunk appealed to the General Court on two grounds, both of which were contested by OHIM. First, Schunk argued that OHIM had erred in law in basing its decision on the finding that the grooves were decorative elements, rather than a badge of origin. It added that OHIM had failed to recognize that the mark applied for was "another trademark form". Second, Schunk claimed that OHIM did not justify its finding that the mark applied for had not acquired distinctive character through use within the meaning of Article 7(3).

The General Court rejected both grounds of appeal. It argued that the case law on three-dimensional marks consisting of the appearance of the product itself also applied where - as in the present case - the trademark applied for is "another trademark form". Schunk could not rely solely on the description of the mark, as the mark must be capable of being represented graphically. OHIM was thus correct in assessing the distinctiveness of the mark based on its graphical two-dimensional appearance. 

Furthermore, the General Court rejected Schunk’s argument that the public, which consisted of industry specialists, would not regard the grooves on the surface of the chuck as decorative elements, but as an indicator of commercial origin. The General Court referred to established case law in relation to three-dimensional marks: the criteria for assessing the distinctive character of marks consisting of the appearance of the product itself are no different from those applicable to other categories of trademarks. 

Nonetheless, the average consumer’s perception is not necessarily the same in the case of a three-dimensional mark consisting of the appearance of the product itself as in the case of a word or figurative mark consisting of a sign which is independent of the appearance of the product. The average consumer is not in the habit of making assumptions as to the origin of the goods on the basis of their shape or the shape of their packaging in the absence of any graphic or word element. Therefore, it may prove more difficult to establish distinctiveness in relation to three-dimensional marks. 

In those circumstances, the General Court ruled that only a mark which departs significantly from the norm or customs of the sector, and thus fulfils the essential function of indicating the origin of the goods, is not devoid of any distinctive character for the purposes of Article 7(1)(b). In the present case, Schunk had failed to show that the shape, size and alignment of the grooves, which were used by its competitors in a similar way, made the products distinctive per se.

The General Court also dismissed the second ground of appeal, confirming the Board of Appeal’s view that Schunk had failed to prove that the mark had acquired distinctive character through use under Article 7(3). It added that Schunk’s request to present a witness to the court was not permissible, as the appeal can based only on the facts presented before OHIM. The General Court thus rejected the appeal and awarded costs against Schunk.

This decision was probably to be expected. OHIM, backed by the EU courts, remains reluctant to register three-dimensional marks without substantive evidence that they are capable of serving as an indicator of commercial origin.  

Chris McLeod and Florian Traub, Hammonds LLP, London

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