General Court: shape of face with horns not registrable for certain goods in Classes 29 and 30

In The Smiley Company SPRL v Office for Harmonisation in the Internal Market (OHIM) (Case T-242/14, October 7 2015), the General Court of the European Union has found that The Smiley Company’s Community trademark application for the three-dimensional (3D) mark depicted below was not registrable for "jellies" in Class 29 and "preparations made from cereals; pastry and confectionery; ices" in Class 30 of the Nice Classification:

The court reached an identical conclusion in three more appeals brought by The Smiley Company in relation to similar 3D signs (Cases T-243/14, T-244/14 and T-656/13):

The mark portrays a circular shape with eyes, a smiling mouth and devil’s horns (or cat’s ears). The Smiley Company applied for a range of goods and services in Classes 29 and 30. The OHIM examiner and, subsequently, the Board of Appeal refused registration in respect of "jellies; preserved, frozen, dried and cooked fruits and vegetables; milk products" in Class 29 and "preparations made from cereals; pastry and confectionary; ices" in Class 30 on the ground that the mark was devoid of any distinctive character pursuant to Article 7(1)(b) of the Community Trademark Regulation (207/2009).

The Smiley Company lodged an appeal with the court, arguing that the mark represented "an unusual and exceptional form of the goods at issue on the market, capable […] of distinguishing their commercial origin".

The appeal was rejected in relation to "preparations made from cereals, pastry, confectionery" and "ices" in Class 30. This was because the shape in question did not exhibit "any particularity" and did not significantly depart from the customs of the sectors concerned.

The criteria for the assessment of the distinctive character of 3D marks pursuant to Article 7(1)(b) are well established in EU case law. Whilst such criteria are in theory no different from those applicable to other categories of marks, the starting point is that "the relevant public’s perception is not necessarily the same in the case of three-dimensional marks […] as it is in the case of a word or figurative mark". This is because average consumers "are not in the habit of making assumptions about the origin of goods on the basis of their shape or the shape of their packaging in the absence of any graphic or word element and it could prove more difficult to establish distinctiveness" in relation to such marks. 

Therefore, a shape is likely to be devoid of distinctive character if it resembles the shape likely to be taken by the product in question. The upshot is that "only a mark which departs significantly from the norm or customs of the sector" will be able to indicate origin and a mere variant of a common shape will not be sufficient to establish distinctiveness.

In this regard, we are told that "novelty and originality are not relevant criteria", because to "depart significantly" means "to differ substantially from the basic shapes of the goods in question" and not looking like a mere variant. The dividing line between originality and "substantial difference" (or "significant departure") is not clear and a trademark applicant ought to be forgiven for not knowing where they stand.

The onus is on the applicant to provide "specific and substantiated evidence that the trademark applied for has distinctive character [ie, that it departs significantly from the norm or customs]", as it knows its market better. Conversely, it is not necessary for the examiner to provide evidence of the usual character of the shape in trade to establish the lack of distinctive character of the mark.

With regard to jellies, preparations made from cereals, pastry, confectionery and ices, the court held that a shape representing a smiling devil/cat face was a "possible or even common" variant of the presentation and decoration of those goods. Such shape would convey "positive feelings or curiosity", but it would not go beyond its "decorative or emotive effect". Therefore, the mark was not registrable in respect of those goods.

The same was not true for preserved, frozen, dried and cooked fruits and vegetables and milk products as they are not known to be offered with a variety of decorative elements, "let alone ornaments as elaborate as faces and other anthropomorphic or zoomorphic elements".

The outcome of the case is not surprising, nor are the principles and case law cited by the court. However, the writer is curious to find out the basis for the principle that average consumers are not in the habit of making assumptions about the origin of goods based on their shape or the shape of their packaging.

This criterion is commonly applied and ‘taken as read’ but what is its factual and scientific foundation? One wonders whether the European courts have considered any studies or research in the field of consumer behaviour and neuroscience, or simply concluded this on the basis of the judges’ personal experience and common sense. This is not to say that the principle is wrong but, given its pivotal role in the assessment of the distinctive character of 3D mark, it would be interesting to ‘test the hypothesis’, if nothing else, to confirm its solidity.

Cam Gatta, Redd Solicitors LLP