EUIPO: Radiator Grilles and distinctiveness (R 2316/2024-1)

In this case review, the EUIPO held that a sign representing a radiator grille had the sufficient distinctiveness to be registrable as a trade mark in the EU.

Background

Mercedes-Benz (“Mercedes”) applied to register the figurative mark for the grille (the “Mark”) as a EU trade mark in in Class 12 “radiator grills of metal for vehicles” (the “Application”).

Initially, the Application was partially refused by the EUIPO examiner who held that the Mark lacked the necessary distinctive character in relation to the radiator grilles in Class 12.

Namely, because the examiner considered that the sign merely depicted the appearance of the product in question and did not depart significantly from common radiator grille designs in the automotive sector.

Appeal

Mercedes appealed on the following grounds:

• The relevant public for vehicle parts pays a high degree of attention and is accustomed to recognising brand origin through design elements and not simply brand identifiers such as logos.
• The applied-for sign includes a unique star-patterned which is distinct from the sector norms such as trellis.
• The circular element and tapering bar form a distinctive overall composition which contributes to its brand recognition.

Decision

The Board allowed the appeal for the following reasons.

In order for the Mark to possess distinctive character for the purposes of Article 7(1)(b) EUTMR, it must serve to indicate the goods and services in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish those goods and services from those of other undertakings (29/04/2004, C-456/01, EU:C:2004:258). They explained that a specific threshold for artistic creativity or imagination does not exist, i.e., a minimum degree of distinctive character is sufficient.

In this case, the relevant consumers of the radiator grilles were specialists, whose level of attention is increased on account of their knowledge and professional experience.

For the Mark to be registered, it must depart significantly from the norms of the sector as it indicates the product itself.

Whilst the Board considered that individual elements of the Mark’s design may not be distinctive, it was the specific combination in this case (a mesh grille structure, central circular emblem area, and a uniquely shaped central bar) that created the distinctive overall impression, which can still be perceived by consumers as indicating commercial origin.

The Board therefore concluded that the mark met the required threshold of distinctiveness.

Briffa Comment

This case is interesting from a legal perspective, as the decision shows in sectors such as automotive where the level of attention of the average consumer is high, the threshold for distinctiveness can be met without brand identifiers being present, i.e., logos.

We recommend that a designer, assuming novelty is present, should apply for registered UK design rights, which shift the onus away from copying and make them a more effective tool for enforcement.

Kemal Tayyareci – Solicitor