No ray of light for torch shape mark applications

In Mag Instrument Inc v Office for Harmonization in the Internal Market (OHIM), the European Court of Justice (ECJ) has upheld the OHIM's decision to refuse the registration of a series of three-dimensional signs representing shapes of torches.

Mag Instrument Inc, the manufacturer of a famous brand of torches, applied to the OHIM to register five torch shapes as Community trademarks. The examiner refused registration and the OHIM's Second Board of Appeal confirmed the decision. The board held that the marks lacked any distinctive character. It noted that a mark representing the shape of the goods to which it applies will be considered distinctive, only if potential purchasers perceive the shape as an indication of the origin of the goods and not as a representation of the goods themselves.

Mag Instrument appealed to the Court of First Instance (CFI), arguing that the marks were not devoid of any distinctive character. In support of this argument, it produced evidence that included:

• an expert's report from a design professor highlighting "the originality, creativity and distinctiveness of the torch shapes";
  
  
• a number of references in books indicating that the torches were of a distinctive design;
  
  
• museum exhibitions that had featured the torches; and
  
  
• international awards it had won in relation to the design of the torches.

The CFI dismissed the appeal and upheld the OHIM's decision. It based its ruling on the presumed perception of the average consumer as regards the issue of inherent distinctiveness. It therefore considered Mag International's evidence to be irrelevant as it had not claimed distinctiveness acquired through use. The CFI found that Mag International's signs were simply variants of a common torch shape, based on a cylindrical form opening out at the end where the bulb is located. As a result, the CFI concluded that the average consumer would not perceive the shapes as an indication of a specific commercial source, confirming that they were devoid of any distinctive character. Mag International appealed again.

The ECJ dismissed Mag International's appeal and affirmed the CFI's decision. Among other things, the ECJ pointed out that the criteria of originality and creativity, which are relevant for the protection of designs, are not appropriate for assessing inherent distinctiveness.

Peter JA Munzinger, Bardehle Pagenberg Dost Altenburg Geissler, Munich