General Courtroom Confirms That Body-Builder Silhouette Cannot Last Registered Every Moment A Merchandise Order For Nutritional Supplements

The body-builder silhouette

Can “a silhouette, represented inwards black, of a soul adopting a typical body-building pose displaying the muscles of his body” live registered as a merchandise score for – with other things – nutritional supplements, clothing, too footwear?

As Katfriend Nedim Malovic (@malovicSE) explains, this real enquiry has been of late addressed past times the General Court.

Here’s what Nedim writes:

“In its judgmenton 29 September 2016 (Universal Protein Supplements Corp v European Union Intellectual Property Office Case, T-335/15, EU:T:2016:579) 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 score for the next classes of goods too services, too descriptions:

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

Background

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

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

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

The EUIPO Fifth Board of Appeal dismissed the appeal inwards March 2015. It held that the message conveyed past times the sign related to ‘body-building’ or a ‘body-builder’ too that the relevant populace would perceive a straight too specific link betwixt the sign too the goods too services designated past times the score applied for.

The Board of Appeal concluded that such score brutal inside the prohibition position downward inwards Article 7(1)(c) EUTMR. Furthermore, the score was devoid of whatever distinctive grapheme inside the important of Article 7(1) (b) EUTMR, on the terra firma that it only consisted of a representation of a body-builder, which would non enable the relevant populace to perceive it as an indication of the commercial beginning of the goods too services inwards question.

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

The National Lottery silhouette

Analysis

The General courtroom began past times examining whether Universal Protein’s score should live 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 freely available for use. In addition, a sign of this variety fails to fulfil the essential business office of a merchandise mark, ie to position the commercial beginning of one’s ain goods or services.

The General Court too so stated that the descriptive nature of a sign is only to live assessed, (1) past times reference to the means inwards which it is perceived past times the relevant public, too (2) past times reference to the goods or services concerned:

(1) Having regard to the relevant goods too services (nutritional supplements, clothing, footwear too online retail services relating to those goods) too considering that the score is strictly figurative too lacks whatever verbal element, the average consumer – champaign reasonably good informed too reasonably observant too 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 past times that sign would relate to body-building.

(2) The chosen goods too services inwards Classes five (nutritional supplements), 25 (clothing; footwear), too 35 (online retail shop services featuring nutritional supplements; wellness too diet-related products; vesture too shoes), are all indicative that the score applied for has a sufficiently straight too specific link with nutritional supplements, clothing, footwear, too online retail shop services of those goods too goods related to wellness too diet. According to the court, even if the categories of goods too services at number were to too include services with no link to body-building too that, accordingly, the sign at number were non descriptive of all the goods too 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 whatever distinction. Accordingly, the body-builder sign would autumn inside the prohibition educate past times Article 7(1)(c) EUTMR.

Contrary to the applicant’s claims, the courtroom establish that the alleged aesthetic grapheme of the stylised icon does non require whatever mental essay out 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 similar a shot clear. By referring to before illustration 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, too so that sign must live as refused.

Merpel's silhouette

The applicant’s farther claim that in that place would live no full general involvement inwards requiring that a representation such as that inwards the introduce illustration live available because in that place are practically unlimited ways of depicting body-builders was regarded as irrelevant. In that respect, the courtroom noted (as too previously stated past times 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 request to larn out a sign free.

The Board of Appeal was thence right inwards lastly that the sign inwards enquiry 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 distinctive, too concluded that the body-builder silhouette could non live registered as a merchandise score because of the prohibition inwards Article 7(1)(c) EUTMR.

Conclusion

This conclusion appears right from a formal standpoint, too in all likelihood the General Court was concerned with the implications of creating a monopoly over the utilization of a silhouette of this variety for such types of goods too services. However, inwards the past times in that place choose been decisions that could choose supported a dissimilar outcome. For instance, it is unclear why the silhouette of a body-builder should live descriptive of nutritional supplements, piece a manus with a grin too crossed fingers should non propose “best of luck” too clit what the concept of lottery is all about. Yet, the National Lottery ‘hand’ was successfully registered as a European Union merchandise mark.”