Further 3D trade mark application given the brush-off for lack of distinctive character

Following numerous recent cases, the EU General Court (the Court) has dismissed an application for a 3D European trade mark (EUTM) for a stylised toothbrush and uphold the EUIPO decision.

Despite the applicant's claim that the EUTM was distinct from other toothbrushes on the market due to its unusual toothbrush/teaspoon appearance.  The Court found that the mark's characteristics were inherent to its function as a toothbrush (i.e. the width of the head and handle and bumps on the product's surface), there were no unique features present which made the mark sufficiently distinctive to be capable of registration in class 21 - which covers hand held utensils including electric and non-electric toothbrushes.

The Court reiterated the position that for the trade mark to possess distinctive character, it must serve to identify the goods as originating from a particular undertaking and distinguish those goods from those of other undertakings.  This must be assessed with reference to the relevant goods or services and average consumers of these goods or services.

The Court held that the fact that a shape, in this case a toothbrush, is a variant of the common shape of that type of goods is not sufficient to show the mark has distinct character.  The Court considers that the mark was in the form of a toothbrush not a unique teaspoon-toothbrush product. The relevant consumers would therefore perceive the mark as a variant of a usual toothbrush – which cannot be registered.

The Court's decision, whilst perhaps expected on the particular facts in this case, highlights the potential difficulties in registering EUTM's for 3D shapes and again clarifies the requirements for 3D trade mark registration. A lack of distinctiveness appears to be the most common issue for trade mark applicants looking to register a 3D shape and it will be interesting to see how this area of law develops.