Three-dimensional mark for microphones is not distinctive

In Georg Neumann GmbH v Office for Harmonization in the Internal Market (OHIM) (T-358/05), the Court of First Instance (CFI) has affirmed a decision of the Board of Appeal of OHIM rejecting the application for the registration of the shape of a microphone head grill as a three-dimensional mark on the grounds that it lacked distinctive character.

On December 9 1996 Georg Neumann GmbH applied for the registration of a three-dimensional mark for microphones (in particular, studio microphones, condenser microphones and pressure-gradient microphones and their parts) in Class 9 of the Nice Classification. The mark takes the form of a microphone head grill.

The examiner of OHIM rejected the application on the grounds that the mark lacked distinctive character within the meaning of Article 7(1)(b) of the Community Trademark Regulation (40/94/EC). The examiner provided images of similar microphones manufactured and marketed by other undertakings.

On November 6 2002 Georg Neumann appealed to the Board of Appeal of OHIM. Among other things, it alleged that:

• some of the microphones of similar design referred to by the examiner came from competing undertakings which had stopped producing and marketing those microphones due to steps taken by Georg Neumann;
  
  
• some of the microphones of similar design were low-quality products which were not in direct competition with Georg Neumann's products;
  
  
• the narrow group of target consumers would notice that the specific shape of the microphone had no functional significance; and
  
  
• the shape in question, as a combination of aesthetic elements, produced an overall unique impression which imprinted itself in the memory.

The board upheld the decision of the examiner. It considered that the conduct of the undertakings which had stopped marketing microphones of similar design was insufficient to confer distinctive character on the mark. Georg Neumann appealed to the CFI.

Before the CFI, Georg Neumann requested that the list of goods covered by the application be limited. The CFI refused, as this would have altered the relevant public with regard to whom the distinctive character of the mark was being analyzed.

The CFI also disagreed with Georg Neumann's argument that the issue of the relevant public's perception could be resolved only by experts (ie, sound specialists). The CFI affirmed the board's finding that:

"the perception of the relevant public is not necessarily the same in the case of a three-dimensional mark made up of the shape of the product itself as in the case of a word or figurative mark which involves a sign independent of the shape of the goods that it describes."

Further, the CFI considered that the fact that the average consumers of the relevant products are endowed with a high level of attention was insufficient to establish that they are used to recognizing an indication of origin in the shape of the products. According to the court, although the relevant public may be more attentive to different details in the products, this does not automatically imply that the public may perceive a shape as having the role of a trademark.

The CFI added that the relevance of the examples of analogous shapes provided by the examiner could not be denied on the grounds that the conduct of the third parties producing or marketing those products might infringe national laws relating to trademarks or unfair competition. The CFI recalled that the EU trademark regime is an autonomous system which applies independently of any national system; therefore, the registrability of a sign must be assessed on the basis of the relevant EU legislation alone. Further, with regard to the evidence demonstrating the design of the shape, the CFI held that the fact that goods benefit from a high-quality design does not necessarily mean that their shape enables them to be distinguished from those of other undertakings.

Päivi Salonen, Turun Patenttitoimisto Oy (a subsidiary of Berggren Oy Ab), Helsinki