A backpack shape as a 3D trademark – a BoA decision of the EUIPO

I. General aspects relating to 3D/shape marks

The 3D trademark is a figurative trademark in which the three-dimensional design or shape of a trademark is protected. This can be the packaging or shape of a product.

As with other forms of trademarks, it is particularly important that the mark must be distinctive. No prerequisite for 3D trademark protection is – contrary to design law – the novelty and uniqueness of the aesthetic design of a consumer product.  If the respective requirements are met, a product design can be protected as a design and at the same time as a three-dimensional trademark, since the respective protection fulfils different functions.

EUTM No. 011711496 owned by Fenix Outdoor AB

Last year in 2020, various European trademark offices agreed on a common practice regarding 3D/shape marks in order to strive for further harmonization of EU decision making.

- If a non-distinctive shape is represented in a specific color, it is necessary for decisiveness that the specific color combination is unusual for the product and characterizes the overall impression.

- If the shape is supplemented by a distinctive word or figurative element, distinctive character can be assumed if this characterizes the overall impression. In the case of very well-known trademarks, even small word and figurative elements are to be regarded as distinctive.

This requirement was also the subject of a new decision of the EUIPO Board of Appeal (BoA) on 21 May 2021, with regard to a backpack shape as a 3D trademark (Case R 1485/2020-1).

II. Background of the case

In 2013, Fenix Outdoor AB applied for the 3D trademark shown above in class 18 for the goods backpacks, which was published and registered.

On 25 January 2019, Gor Factory, S.A. filed an application for a declaration of invalidity and cancellation of the registered trademark for all goods. This was based on Article 59 (1) (a) EUTMR, as they see a violation of Article 7 (1) (a) and (b) EUTMR.

This request was rejected by the Cancellation Division in its decision dated 27 May 2020, against which the applicant filed an appeal. The BoA of the EUIPO decided on this matter on 21 May 2021.

III. Decision of the Board of Appeal of the EUIPO

The appeal is admissible, but unfounded. The Board could not identify a violation of Article 7 (1) (b) EUTMR. The examination of distinctiveness is carried out in various stages. First, it is determined whether the shape as such is devoid of distinctive character, only then other elements are identified and thereupon the distinctive character accruing to them is assessed. Second, the assessment is made in the context of the overall view, which is particularly important in the case of three-dimensional marks consisting of the appearance of the product itself.

- As to the first point, the Board held that the sign consists of the shape of a backpack, which is common and usual overall, so that the shape alone does not give rise to any distinctive character.

- At the next stage of the assessment, the fox logo was included as a figurative element, which was considered distinctive, since this animal has no connection with the protected goods.

Due to the fact that the figurative element (the fox logo) was included in the shape mark, it was found that it is in a central position within the shape and due to its size, it can attract the attention of the consumer. In particular, buyers of backpacks would know that the distinctive sign of those goods is usually on the upper front of the bag, so that attention is drawn to the fox logo and ensures that the mark as a whole is actually perceived as an indication of origin.

The Board also did not find a violation of Article 7 (1) (a) EUTMR. In particular, the applicant has not provided any evidence to the contrary that the requirements of Article 4 EUTMR are not met. Since the mark has already been found to be distinctive and therefore registered, it must necessarily be capable of providing an indication of origin.

It remains to be seen if the BoA decision will be appealed to the European General Court or if it will become final.