General Courtroom Confirms That Body-Builder Silhouette Cannot Hold Upward Registered Every Mo A Merchandise Rank For Nutritional Supplements

The body-builder silhouette

Can “a silhouette, represented inwards black, of a mortal adopting a typical body-building pose displaying the muscles of his body” live on registered as a merchandise grade for – alongside other things – nutritional supplements, clothing, in addition to footwear?

As Katfriend Nedim Malovic (@malovicSE) explains, this rattling query has been latterly addressed yesteryear the General Court.

Here’s what Nedim writes:

“In its judgmenton 29 September 2019 (Universal Protein Supplements Corp v European Union Intellectual Property Office Case, T-335/15, EU:T:2019:579) the General Court upheld the conclusion of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) concerning an application to register a figurative sign representing a body-builder as a European Union merchandise grade for the next classes of goods in addition to services, in addition to descriptions:

      Class 5: ‘Nutritional supplements’;
Class 25: ‘Clothing; footwear’;
Class 35: ‘On-line retail shop services featuring nutritional supplements; wellness in addition to diet-related products; wearable in addition to footwear’.

Background

In 2014 the applicant, Universal Protein Supplements Corp, filed an application with the EUIPO to select the European Union territory designed inwards observe of the international registration of a figurative sign representing a body-builder. The application was for goods in addition to services inwards the classes indicated above.

The EUIPO examiner rejected the application, on grounds that the grade lacked whatsoever distinctive grapheme in addition to was descriptive for the role of Article 7(1)(c) of Regulation No 207/2009 on the (now) European Union Trade Mark (EUTMR).

In belatedly 2014 Universal Protein appealed the examiner’s decision.

The EUIPO Fifth Board of Appeal dismissed the appeal inwards March 2019. It held that the message conveyed yesteryear the sign related to ‘body-building’ or a ‘body-builder’ in addition to that the relevant populace would perceive a straight in addition to specific link betwixt the sign in addition to the goods in addition to services designated yesteryear the grade applied for.

The Board of Appeal concluded that such grade cruel inside the prohibition position downward inwards Article 7(1)(c) EUTMR. Furthermore, the grade was devoid of whatsoever distinctive grapheme inside the important of Article 7(1) (b) EUTMR, on the solid position down that it but consisted of a representation of a body-builder, which would non enable the relevant populace to perceive it as an indication of the commercial rootage of the goods in addition to services inwards question. 

Universal Protein did non all the same lose hope, in addition to decided to appeal the conclusion before the General Court.  It claimed that: (i) the Fifth Board of Appeal had failed to take in the grade as a whole; (ii) that its ain picture of the body-builder has several meanings in addition to conveys a message that goes beyond that of a ‘body-builder’ or ‘body-building’, in addition to (iii) that securing registration would non impair the populace involvement aim that descriptive signs are non monopolised yesteryear economical operators.  

The National Lottery silhouette

Analysis

The General courtroom began yesteryear examining whether Universal Protein’s grade should live on considered descriptive.  

Article 7(1)(c) EUTMR pursues a populace involvement aim. Referring to Agencja Wydawnicza Technopol, the courtroom recalled that a sign that is descriptive of the characteristics of the relevant goods or services ought to live on freely available for use. In addition, a sign of this sort fails to fulfil the essential role of a merchandise mark, ie to position the commercial rootage of one’s ain goods or services.

The General Court so stated that the descriptive nature of a sign is only to live on assessed, (1) yesteryear reference to the agency inwards which it is perceived yesteryear the relevant public, in addition to (2) yesteryear reference to the goods or services concerned:

(1) Having regard to the relevant goods in addition to services (nutritional supplements, clothing, footwear in addition to online retail services relating to those goods) in addition to considering that the grade is strictly figurative in addition to lacks whatsoever verbal element, the average consumer – patently reasonably good informed in addition to reasonably observant in addition to circumspect – is the populace of the entire European Union. This said, because the sign consists of a typical body-builder, displaying the muscles of his body, represented inwards dark silhouette, the message conveyed yesteryear that sign would relate to body-building.

(2) The chosen goods in addition to services inwards Classes five (nutritional supplements), 25 (clothing; footwear), in addition to 35 (online retail shop services featuring nutritional supplements; wellness in addition to diet-related products; wearable in addition to shoes), are all indicative that the grade applied for has a sufficiently straight in addition to specific link with nutritional supplements, clothing, footwear, in addition to online retail shop services of those goods in addition to goods related to wellness in addition to diet. According to the court, even if the categories of goods in addition to services at number were to too include services with no link to body-building in addition to that, accordingly, the sign at number were non descriptive of all the goods in addition to services inwards those categories, the applicant had applied for the registration of the sign at number for each of these as a whole without making whatsoever distinction. Accordingly, the body-builder sign would autumn inside the prohibition position upwards yesteryear Article 7(1)(c) EUTMR.

Contrary to the applicant’s claims, the courtroom constitute that the alleged aesthetic grapheme of the stylised picture does non require whatsoever mental assay on behalf of the relevant public. The important of the sign at number (which refers to the concept of ‘body-builder’ or ‘body-building’) is straightaway clear.  By referring to before representative law, the courtroom added that, fifty-fifty assuming that a sign has several meanings, if at to the lowest degree i of the meanings designates a feature of the goods concerned, so that sign must live on every bit refused.

Merpel's silhouette

The applicant’s farther claim that at that topographic point would live on no full general involvement inwards requiring that a representation such as that inwards the introduce representative live on available because at that topographic point are practically unlimited ways of depicting body-builders was regarded as irrelevant. In that respect, the courtroom noted (as too previously stated yesteryear the EUIPO) that, according to settled case-law, the application of Article 7(1)(c) of the EUTMR does non depend on the beingness of a real, electrical flow or serious necessitate to exit a sign free. 

The Board of Appeal was thence right inwards terminal that the sign inwards query is descriptive for the role of Article 7(1)(c) EUTMR.

All this said, the courtroom considered unnecessary to review whether the sign at number would live on distinctive, in addition to concluded that the body-builder silhouette could non live on registered as a merchandise grade because of the prohibition inwards Article 7(1)(c) EUTMR.

Conclusion

This conclusion appears right from a formal standpoint, in addition to belike the General Court was concerned with the implications of creating a monopoly over the exercise of a silhouette of this sort for such types of goods in addition to services. However, inwards the yesteryear at that topographic point select been decisions that could select supported a dissimilar outcome. For instance, it is unclear why the silhouette of a body-builder should live on descriptive of nutritional supplements, spell a paw with a smiling in addition to crossed fingers should non propose “best of luck” in addition to depict what the concept of lottery is all about. Yet, the National Lottery ‘hand’ was successfully registered as a European Union merchandise mark.”

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