Samsonite is shut out
Adeena Hussain spells out why it failed to bag a 3D registration. R 503/2021-2, Speculative Product Design LLC v Samsonite IP Holdings S.a.r.l, EUIPO, 24th May 2022.
Key points
- Functional elements were determined to be incapable of conferring distinctiveness on the mark, as they would not be seen as an indicator of commercial origin
- Samsonite failed to sufficiently prove that its 3D shape mark possessed acquired distinctive character through use
- The outcome here backs up the contention that is notoriously difficult to protect unconventional trade marks at the EUIPO; considering alternative protection is suggested
The EUIPO Board of Appeal (BoA) here held that the 3D shape mark of Samsonite’s tablet case was devoid of any distinctive character because it didn’t depart sufficiently from the norms and customs of the relevant sector.
It also held that the essential characteristics of the mark, being the “arms” and “legs” of the tablet case, were purely functional and so weren’t capable of indicating origin.
Background
Samsonite applied to register a 3D shape mark for goods in class 9, broadly summarised as covers, cases and stands for computers, laptops and tablets.
The EUIPO initially refused the application for registration on the grounds of lack of distinctive character, as per Article 7(1)(b), Regulation (EU) 2017/1001 (EUTMR), because the mark did not depart significantly from the norms and customs of the relevant sector.
Samsonite maintained its request for registration of its mark and tried to argue that, as its mark had a quirky design resembling a cartoon figure, it stood out from other products of a similar type and that this quality acted as a badge of origin.
Samsonite also submitted evidence to argue that its shape mark had acquired distinctive character through use.
Following back and forth correspondence between Samsonite and the Examiner, the application was refused again on the grounds of Article
7(1)(b), and additionally on the grounds that the essential characteristics of the mark were functional.
This meant that the shape mark as a whole was necessary to obtain a technical result (Articles 7(1)(e)(ii) and 7(2) EUTMR). Samsonite appealed the EUIPO’s decision with the BoA.
Samsonite’s arguments
Samsonite attempted to argue that children would see the shape of the 3D mark as a “mini friend” or “companion”.
However, it was clear that there are a variety of shapes for tablet cases already on the market, with decorative elements such as faces, eyes and hands, that may also be perceived as “mini friends”.
In particular, the BoA highlighted two products as “quirky” and “eccentric” designs that represent a cartoon figure, similarly to Samsonite’s mark.
Since there exists such a wide variety of shapes related to electronic device cases on the market for children, consumers would be used to seeing these types of products and would see Samsonite’s mark as simply a variant of these many shapes.
The BoA also pointed to the fact that there are numerous Registered Community Designs (RCDs) for tablet cases incorporating eccentric features that represent cartoon figures, such as handles meant to indicate arms and legs, and facial features.
The online search results that provided the marketplace examples, and the earlier RCDs, confirmed that Samsonite’s shape mark did not depart significantly from the norm or customs of the sector.
It was confirmed that the handles in Samsonite’s mark that represented arms and legs were purely functional in nature and purpose, to allow children to hold the device in the case by the “arms” or to allow the case to stand freely on its “legs”.
These functional elements were therefore incapable of conferring distinctiveness on the mark, as they wouldn’t be seen as an indicator of commercial origin.
Typical features
The mark was held to possess a combination of features of a case for an electronic device, namely a rectangular opening for the screen, lateral handles and supports to allow it to be free‑standing.
These elements didn’t depart significantly from the features that are typical for these kinds of goods, so consumers would only see the mark as coming from the diversity of the relevant market and not as an indication of origin itself.
The overall impression of the mark was not sufficiently different from that produced by other shapes in the market for the minimum degree of distinctive character required.
Samsonite had also failed to prove sufficiently that the 3D shape mark possessed acquired distinctive character through use, as the evidence that was submitted did not meet the relevant criteria.
Because the BoA dismissed the appeal on the grounds of lack of distinctive character, it didn’t go on to consider the grounds under Articles 7(1)(e)(ii) and 7(2) EUTMR.
The outcome here backs up the contention that it is notoriously difficult to protect unconventional trade marks at the EUIPO, whether they be 3D shape marks, sound marks or even motion marks.
When it comes to these types of mark, it could be worth considering alternative or supplementary means of protection in addition to trade mark registrations, such as registered design protection.
It is also important to always review evidence of acquired distinctiveness carefully, taking note of the EUIPO’s guidelines on the content and type of evidence that will be considered sufficient.
Adeena Hussain is an Associate at Bird & Bird LLP
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