The EU General Court has upheld a decision of the Fifth Board of Appeal against the registration of a figurative trade mark constituting an image representing a 'bodybuilder' in a silhouette form. The application was rejected on the grounds of the mark being descriptive and not being distinctive enough. The case reference is (Universal Protein Supplements Corp v European Union Intellectual Property Office Case, T-335/15, EU: T:2016:579).
The applicant, Universal Protein Supplements Corp (Universal), based in the US, filed a trade mark application with the EUIPO in 2014. It was filed in the following classes:
Class 5: 'Nutritional supplements'; Class 25: 'Clothing; footwear'; Class 35: 'On-line retail store services featuring nutritional supplements; health and diet-related products; clothing and footwear'.
The application was rejected by the examiner on the grounds that the mark was devoid of distinctive character under Article 7(1)(b) and that it was descriptive of the goods and/or services for the purposes of Article 7(1)(c) European Union Trade Mark Regulation. Universal appealed the examiner's decision to the Fifth Board of Appeal however their appeal was rejected in March 2015.
On their final attempt, Universal appealed this decision to the General Court who then sided with the Board of Appeal and upheld their decision. It was held that the relevant public who were well informed of the goods and services offered by the applicant would easily associate the mark with the image of a bodybuilder in a typical 'bodybuilding' pose. Further, the mere representation of a bodybuilder would not indicate to the public the commercial origin of the goods or services.
Universal put forward the argument that the mark had more than one meaning and was not restricted to bodybuilding. However, even if a mark does have more than one meaning, if one meaning is descriptive then the application is likely to fail.
It transpires that Universal has been successful in registering the same figurative mark as a UK trade mark in 2014, registration number UK00003012520, registered within the same classes as the rejected European application. The reality of trade marks registrations is that ultimately, if and until they are challenged in the courts, there is no guarantee of their validity.
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