When applying for a trademark, we often wonder whether it will be considered descriptive, lacking in distinctive character, totally or partially similar to a PDO… and therefore rejected by the corresponding registration office, by incurring an absolute ground for refusal.
In the specific case of European trademarks and absolute grounds for refusal, we must turn to Article 7 of the EUTMR. On this occasion, we will focus on the lack of distinctive character that is usually attributed to graphic colour marks, and which would be included in point 1(b) of the aforementioned Article 7: “The following shall not be registered: b) trademarks which are devoid of any distinctive character”.
As the Court has established, an extremely simple sign, consisting of a simple geometric figure, such as a circle, a line, a rectangle or a pentagon, is not capable, as such, of conveying a message that consumers are likely to remember, so that they will not regard it as a trademark. A figurative sign may consist of shapes, designs or figures which may be perceived by the relevant public as labels devoid of distinctive character. In such a case, the ground for refusal is that such figurative elements are not capable of making an impression on the consumer’s mind, as they are either too simple or are commonly used in relation to the goods and services to be protected and are therefore devoid of distinctive character.
This is precisely what is argued in Case T-426/23 Chiquita Brands v EUIPO – Compagnie financière de participation, judgment of 13 November. The Court confirms that Chiquita Brands’ blue and yellow oval cannot be protected as an EU trademark for fresh fruit, as neither the shape nor the colour combination confer distinctive character. The shape of the mark corresponds to that of a simple geometric figure (a variation of an oval), without any easily and instantly memorable features. Furthermore, oval labels are commonly used in the banana sector, as they are easy to stick on curved fruits. As a result, it will not be able to attract the public’s attention or allow them to identify the commercial origin of the fresh fruits designated by the brand. In addition, Chiquita Brands failed to prove the distinctiveness of its mark, acquired by use, which is usually the most common way to try to overcome such refusals.
This case is an example of how difficult it is to obtain registration and protection of purely figurative elements and basic geometric shapes (although such components are an important part of the identity and communication of a trademark, especially famous ones); and also of how difficult it is to prove acquired distinctiveness (Article 7.3 EUTMR), as the evidence must cover all 27 EU member states and prove use of the mark as registered.
Does this fact, together with the Court’s reasoning and conclusions (oval labels are mostly used in the banana sector, as they are particularly easy to attach to curved fruit), make this ruling too strict? We leave the debate open.
Raquel Tostón
Attorney at Law
