Three-dimensional mark for loudspeaker held to be distinctive

In Bang & Olufsen A/S v Office for Harmonization in the Internal Market (OHIM) (T-460/05), the Court of First Instance (CFI) has held that Bang & Olufsen A/S's pencil-shaped loudspeaker design should be registered as a three-dimensional Community trademark on the grounds that the mark departs significantly from the customs of the sector.

On September 17 2005 Danish company Bang & Olufsen applied to register a three-dimensional mark as a Community trademark for goods in Classes 9 and 20 of the Nice Classification for, among other things, loudspeakers and music furniture.

The examiner at OHIM rejected the application pursuant to Article 7(1)(b) of the Community Trademark Regulation (40/94/EC) on the grounds that the mark applied for was devoid of any distinctive character. In addition, the examiner rejected the application under Article 7(3) of the regulation on the grounds that the evidence submitted by Bang & Olufsen was insufficient to demonstrate distinctiveness acquired through use.

On April 27 2005 Bang & Olufsen filed a notice of appeal to the Board of Appeal of OHIM. On September 22 2005 the board dismissed the appeal on the grounds that the mark in question was barred from registration pursuant to Article 7(1)(b), since the mark was devoid of any inherent distinctive character. Bang & Olufsen appealed to the CFI.

Before the court proceedings, the board corrected its decision. It stated that it had made an obvious mistake in failing to examine the claim for registration under Article 7(3) of the regulation. However, the board held that the application was also dismissed under that provision on the grounds that the body of evidence provided by Bang & Olufsen was insufficient to demonstrate distinctiveness acquired through use.

Before the CFI, Bang & Olufsen pleaded that OHIM had infringed Articles 7(1)(b) and 7(3). With regard to Article 7(1)(b), Bang & Olufsen submitted that, among other things:

• The board applied a stricter standard than that used for other types of trademarks;
  
  
• Consumers will perceive the overall appearance of the loudspeakers in question as a distinctive indicator of commercial origin;
  
  
• The shape of the loudspeakers is very characteristic and differs significantly from the norms or customs of the sector; and
  
  
• Bang & Olufsen's products are top of the range, which should be taken into consideration in defining the relevant public.

OHIM, uncertain of the correctness of the board's reasoning, asked the CFI to determine whether a shape which is essentially inspired by aesthetic considerations (but does not give substantial value to the goods within the meaning of Article 7(1)(e)(iii) of the regulation) and differs significantly from a shape commonly used in the trade can perform a trademark function. In addition, OHIM argued that the definition of the relevant public should be the average EU consumer and that the position of Bang & Olufsen on this issue was irrelevant.

The CFI disagreed with Bang & Olufsen's argument that the definition of the relevant public should be different in this case due to the way in which the products are marketed. However, the CFI ruled that the distinctive character of the trademark must be assessed in relation to the perception of the average consumer who exhibits a particular level of attention when making his or her choice between different goods.

With regard to the examination of distinctive character, the CFI stated that:

"average consumers are not in the habit of making assumptions about the origin of the product 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 a three-dimensional mark than in relation to a word or figurative mark."

The CFI underlined that only a mark which departs significantly from the customs of the sector and thus fulfils its essential function of indicating origin is not devoid of distinctive character under Article 7(1)(b) of the regulation.

After examining the mark applied for (which is described as a "vertical, pencil-shaped column with a long, rectangular panel attached to one side" and "the point of the pencil joining to a flat base"), the CFI stated that the shape in question was "truly specific and cannot be considered to be altogether common", and that "the whole creates a striking design which is remembered easily".

Therefore, the CFI held that the mark applied for distinguishes the goods covered from those of another commercial origin. Thus, the CFI concluded that OHIM had misconstrued the wording of Article 7(1)(b) of the regulation and annulled the contested decision.

Lasse A Søndergaard Christensen and Christian Fleischer Christiansen, Gorrissen Feder-spiel Kierkegaard, Aarhus