Written by: Natalia Kokesova
As luxury brands continue to develop their signature image, it is, arguably, essential to protect the new elements incorporated into their brand. Such elements may equally indicate to consumers the origin of products, just as the brands’ name would. Hence, exclusivity of those elements becomes vital so brands continue to expand and exploit monetarily their creations.
Nevertheless, brands attempting to register figurative elements may face an obstacle difficult to overcome in the registration process: proving distinctiveness. In other words, proving the mark has distinctive character of its own in relation to the class of goods registration is sought after. Such difficulty was recently evidenced in Pierre Balmain v EUIPO.
The case illustrates how proving a mark has distinctive character might be slightly more challenging when such mark is a purely figurative mark (i.e. without words or numbers). This article provides an overview of the distinctiveness requirement in the trademark registration process, and the intricacies of such requirement – mainly proving sector distance – in relation to figurative marks.
1. The Trademark Registration Process and the Role of Distinctiveness
A trademark, is a mark (i.e. a sign which conveys information) which is protected in relation to certain goods or services. In contrast to other forms of intellectual property protection, trademarks have a vital commercial function: to indicate the origin of goods. Trademarks allow owners to sell, license or restrict the use of such mark; and conversely, allow consumers to obtain information about the source of a product to make a conscious purchase. Keeping in mind this function is essential to understand whether trademark protection will be granted.
While it is perfectly possible to seek registration domestically (e.g. a UK mark filed at the United Kingdom Intellectual Property Office [UKIPO]), the mark that Balmain attempted to protect was filed at the European Union Intellectual Property Office (EUIPO). Hence, the main steps of the registration process at EUIPO, which slightly differ from those at UKIPO, are explained below.
First, a search of prior rights will be conducted. Second, the trademark official application form will be filed and any appropriate fees will be paid. Third, the examination period will begin: an Examiner will review the application and approximately one month after filing, a notice may be issued regarding questions or issues of the application which the applicant can clarify. Fourth, the application will be published in the EU Trade Marks Bulletin. This gives an opportunity for third parties to file a notice of opposition within three months of publication. Fifth, assuming no opposition is filed or is successfully overcome, the trademark will be issued and the, now, trademark owner will have exclusivity of the mark across the 27 EU member states.
From all the above-mentioned steps, the examination period is most relevant for our purposes. During that period, the Examiner can raise an objection that prevents registering the mark– mainly, claim that the trademark applied for is barred by absolute grounds. And, one of such grounds is marks devoid of any distinctive character.
2. Absolute Grounds for Refusal: Marks Devoid of Distinctive Character
Absolute grounds for refusing trademark registration are concerned with the internal characteristics of a mark which do not allow it to be registered. As above-mentioned, one of such grounds is that the mark lacks distinctive character. Distinctiveness requires an assessment of whether the mark can perform the vital function of a trademark.
The test for making such assessment is whether the mark, in relation to the goods and services registration is sought after, and in the eyes of the relevant public, enables such public to distinguish the mark from those having a different trade origin. In other words, does the public perceive the sign to be a mark of a particular undertaking?
If the mark allows the public to identify the origin of goods and distinguish them from those of other undertakings, then the policy behind distinctiveness is fulfilled.
It is important to note that an applicant – such as Balmain – can seek protection for multiple classes of goods and services in a single application: protection may be granted for a certain class and denied for another. Whether protection is granted for all the classes, will depend on whether the policy behind the distinctiveness is satisfied.
As the Balmain case illustrates, satisfying such policy for a figurative mark may be difficult, especially, if the mark is similar to those available within a particular sector.
3. Balmain’s Attempt to Protect its Lion’s Head
The French luxury fashion house, Balmain, filed applications at EUIPO to register a mark consisting of a lion head surrounded by rings: an entirely figurative mark. The registration was sought for different classes including class 14 (cufflinks; ornaments) and class 26 (buttons and press-studs for shoes).
The European Union General Court (GC) upheld the initial decision of the Examiner in relation to the classes mentioned above: the lion’s head lacked distinctive character for those goods. The reasoning was the following.
Within the market, the court noted, there are many buttons and ornaments with a lion’s head. The figurative mark in question was not distinct enough from those currently available so as to justify trademark protection. Had the creation been very distinct from other ornaments portraying a lion’s head, then distinctiveness may have been satisfied.
Balmain had further argued that the goods in class 26 were directed to a public well-versed in fashion and who would be more selective in their purchases; nevertheless, it was held, even though the specialized public may pay a greater degree of attention in their purchases that does not mean that the threshold to satisfy distinctiveness was lower.
Finally, the argument that the mark was an original representation of a lion’s head was noted to have no role in the assessment of distinctiveness.
4. Distinctiveness in Figurative Marks: Final Considerations
The decision in the Balmain case is aligned with previous jurisprudence from the GC. As noted recently, if “the relevant public will … perceive [the mark] as a representation of a particularly interesting or attractive detail of the product in question, rather than as an indication of its commercial origin”, then distinctiveness is not proven.
The mark must be far from marks already available within a sector. In a previous case involving the luxury brand Louis Vuitton, it was reiterated that “only a mark which departs significantly from the norm or customs of the sector … is not devoid of any distinctive character”. This is because such sector-distant mark will indicate trade origin: fulfilling the policy behind trademarks.
From the perspective of the brands seeking figurative mark protection, such distinctiveness test might be a burden preventing them to push the boundaries of their image. However, one must not forget that denying protection for a certain class of goods does not prevent protection of the mark in relation to other classes. And further, brands might have other IP protection devices available – such as design or copyright.
The lesson to be learned is that for entirely
figurative marks, sector distance will be key to prove distinctiveness: the
further away the mark is from what is generally used within a sector, the
greater the likelihood of proving it has distinctive character.
 T‑331/19, T‑332/19 Pierre Balmain v EUIPO 
 Philips Electronics NV v Remington Consumer Products 
 “Trademark Registration Process” (EUIPO) <https://www.euipo.europa.eu/ohimportal/en/registration-process> accessed April 15, 2020
 EU Directive 2015/2436, Article 4
 EU Directive 2015/2436, Article 4 (1) (b)).
 Case C-299/99 Philips Electronics BV v Remington Consumer Products  ECR I-5475
 “List of Classes with Explanatory Notes” (Trademark.eu) <https://trademark.eu/list-of-classes-with-explanatory-notes/> accessed April 15, 2020
 Harvey R, “EU General Court Reiterates That Low Distinctiveness Cannot Be Offset by Specialised Public in Balmain Cases” (The IPKat, March 3, 2020) <http://ipkitten.blogspot.com/2020/03/eu-general-court-reiterates-that-low.html> accessed April 15, 2020
 “Pierre Balmain: No Distinctiveness through Originality of the Mark” (Legal Patent, February 25, 2020) <https://legal-patent.com/trademark-law/pierre-balmain-no-distinctiveness-through-originality-of-the-mark/> accessed April 15, 2020
 Case T‑658/18 Hästens Sängar AB v EUIPO , para 24.
 Case T‑359/12 Louis Vuitton Malletier v OHIM – Nanu-Nana , para 23.