Stricter policy figurative marks OHIM- distinctive character logo

The law dictates that not any sign may be registered as a trademark. If a trademark purely describes the product it is applied for the authorities will refuse to register it. The word E-BIKE for electrical bicycles is refused for this reason. Often it is still possible to register the word when accompanied by a figurative element. Except not every logo is accepted. It used to be somewhat unclear what was and what was not acceptable. For this reason OHIM now has a new directive, which clearly illustrates that a stricter course will be followed than has been the case in the past.

As previously use of a common font (such as Helvetica) is not sufficient. The combination of a descriptive word and a simple graphic shape (a line or circle) is also insufficient. Now, however, deemed insufficient are as well: 1) a figurative element that is too small; 2) elements that are used a lot (such as in labels); or 3) if the image is a depiction of the goods and services. Especially this last point is a great concern, because it does not only apply to photographic images, but also to drawings and stylized images. The question whether the new policy to reject (highly) stylized pictograms is fair or not, is one to be answered by the European Court, for which we probably will have to wait several years. It may be the case, however, that national trademark authorities take a different route than OHIM.

trademarks



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IP quiz Trademarks

Puma is one of the bigger sports and lifestyle brands in the world. The core-business is the design, development and sale of (sports) shoes, (sports) clothing and accessories. In 1960, Puma registered an international trademark for a device designed in 1958: the formstrip. Since then, Puma has registered approximately 90 formstrip trademarks with validity in the Benelux or the European Union. Puma claims that this is a serial mark. Monshoe is a wholesaler of women's shoes and related products. The company designs and develops Monshoe shoes which it largely markets itself. Monshoe sells its women's shoes under the brands Shoecolate and Pearlz. The shoe Shoecolate is offered in various colour combinations. Puma claims that Monshoe infringes its well-known formstrip trademark. Monshoe contradicts this and states that the average consumer will not perceive the device of Monshoe on the sneakers as a trademark. And if the public will recognize a trademark in the decoration, it will not make the connection to Puma. According to Monshoe, the formstrip logo is not a well-known trademark within the meaning of the BVIE and the UMVo. There is no likelihood of confusion because the sign does not or hardly evoke any association with Puma among the public. In light of the above, who is right? Does this constitute decorative use or linking to a well-known trademark?