The Gummy Bear Saga: A Sweet Win for 3D Figurative Marks

The Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) rules on distinctiveness of Gummy Bears.

On 11 October 2023, the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO), in case R 872/2023-4, recognised the distinctiveness of a figurative mark representing a gummy bear.

Abion's Lead Associate, Federica Forchino, discusses how this decision serves as a useful reminder that, just because an image can be used decoratively, that does not mean that it is not capable of being relied upon by the public to determine the trade source of goods, and therefore, may be registrable as trade marks.

Case Background

This story starts with Rigo Trading S.A. (Rigo), the Luxemburg HARIBO group’s holding company and IP custodian of their sugary empire. In a move back in 2021, Rigo, filed an application for an International Registration (IR) under the Madrid Protocol for the 3D figurative mark representing the Gummy Bear, for a wide range of goods and services, including classes 9, 14, 16, 28, 20, 21, 24, 25, 26, 27 and 28.

But here's where it gets interesting. In June 2022, the examiner assigned to the application's designation for the EU (the Examiner) issued a provisional partial refusal. The reason? The Examiner found that the mark lacked the distinctive character needed for protection, pursuant to Article 7(1)(b) of the EU Trade mark Regulation 2017/0001 (EUTMR). This refusal encompassed a substantial part of the goods applied for in the above classes (including computer cases, gemstones, printed matter, bags, household linen, clothing, carpets and toys).

The grounds for the refusal were rooted in the belief that they did not consider the mark to have distinctive character for such goods (i.e. it could not be relied on by the public to determine the trade source) for the following reasons:

• The Gummy Bear image didn't significantly deviate from industry norms, and consumers typically paid more attention to product labels rather than the shapes or packaging.
• The true to life portrayal of a gummy bear or its figurative representation is commonly used for decorative, artistic or aesthetic purposes.

In essence, the Gummy Bear mark was seen as a mere variation of common decorative elements found in other different products. The Examiner illustrated its reasoning using graphic examples found online, in particular, for class 9 (a phone case), 14 (jewellery including a bear pendant) and 25 (inflatable party costumes). This presented Rigo with a not that sweet challenge.

Despite Rigo's attempts to overturn the refusal, when it came to EUIPO reiterating its partial refusal of the Application with the decision issued in April 2023, Rigo wasn't ready to throw in the candy and with the same determination of a child opening a gummy bear packet, filed an appeal against the same.

The appeal, underlined several key points, including:

• the mark was purely figurative, and purely figurative marks usually aren't dismissed as non-distinctive, except in those rare cases involving simple geometrical shapes or commonly used symbols.
• the mark sported distinct elements illustrating a more stylised and abstract version of a bear. This sets it apart from other gummy bear-shaped sweets competitors produce and the examples provided by the Examiner did not refer to the legacy of the HARIBO Goldbear invented in 1978.
• the mark harmonised with precedents related to other European Union Trade marks (EUTMs) that featured stylized animals or geometric shapes, including well-known brands like the Lacoste – crocodile.

The Board's Decision

And then the Board’s decision came like a candy treat at the end of the week....and it was a sweet one with a prompt reversal of the examiner’s decision.

The Board emphasised the essence of 'distinctive character,' defined under Article 7(1)(b) of the EUTMR, as the mark's capacity to identify the origin of goods and services while setting them apart, echoing precedent cases like Vorsprung durch Technik (C-398/08).

In their assessment of “distinctive character”, they considered both the nature of the goods and services and the perspective of the average consumer with moderate attention. The purely figurative nature of the mark required a broader evaluation encompassing the entire EU territory (as per Glaverbel, T-141/06).

While establishing distinctiveness for three-dimensional marks is often challenging, the Board's twist was favourable. They found that the other goods used as an example in the Examiner’s reasoning came in various shapes, and the Gummy Bear motif wasn't automatically associated with these unrelated products. The small size and gum/gelatine composition of Gummy Bears also distinguished them from the different items.

Therefore, the Gummy Bear decorative use didn't diminish the mark's potential as a source identifier, supported by the General Court in Cross on the side of a Sports Shoe (T-117/21).

In the end, as the mark didn't resemble the expected shape of the goods in question and Gummy Bear representations were uncommon on such items, it was deemed to possess the minimum distinctive character necessary for EUTM protection. The appeal prevailed, aligning with the principle that marks can serve both decorative and source-identifying.

Images

Amit Lahav via Unsplash
Freepik