Rejection Of Virtual Image
October 25, 2023
Biswajit Sarkar - IP Law Firm India
Post time: 7:36 pm
In February 2022, Colt CZ Group SE (Colt) a Czech holding company filed an application to register a mark depicting an assault rifle as a European Union Trademark (EUTM)containing the word elements “CZ BERN 2”. The class applied for was under Classes 9, 35 and 41, in respect to virtual goods and services and online entertainment, sporting or cultural services aimed at virtual firearms.
In December 2022, the Examiner issued a decision rejecting the application on the grounds that the Mark failed to satisfy the requirement of intrinsic distinctive character within the meaning of Article 7(1)(b) of the EU Trade Mark Regulation 2017/0001(EUTMR).
GROUNDS FOR REJECTION
1. The Mark is depicting only an image of a firearm which does not look any different from how it is usually represented. The public would only see the Mark as a representation of such an object because it was unable to convey the trademark’s economic communication.
2. Given that it is likely that the products and services in issue will be used by people who lack experience and in-depth knowledge of weapons, the level of attention of the relevant consumer will be at an average to high level.
3. No earlier use of the Mark affects its capacity to be registered, nor does the relevant public—which may be specialized—have any bearing on the legal standards used to evaluate distinctive character.
4. The Mark is therefore devoid of distinctive character.
An appeal to the Board of Appeals was therefore consequently lodged by Colt.
DECISIONS OF THE BOARD OF APPEALS
The Board reasoned that since age limitations and other restrictions that pertain to the purchase of real firearms do not apply to virtual products, they are considerably more broadly available. The Board determined that it was correct that the level of attention of the consumers would be average to high and that the relevant consumer for the products and services in Classes 9, 35, and 41 applied for may not necessarily be a virtual weapon specialist.
The Board noted that the word elements in the application, “CZ BREN 2,” are insignificant and, as a result, insufficient to change the absence of originality in its figurative features. The Board further argued that “design” and “trademark” corresponded to two distinct types of industrial property rights that are governed by various legal frameworks and registration requirements. As a result, the present Community design has no direct impact on the distinctiveness of the contested trademark application.
The Board found that the mark lacked originality in how it portrayed the element on which the claimed goods and services were based and that it prevented the intended consumer from learning the economic origin of the goods and services.
INTERPRETATION
As observed in the given case, the refusal of registration of the trademark application is valid as the Mark failed to signify any distinct feature and was simply a usual visual representation of the weapon within the meaning of Article 7(1)(b) EUTMR. Although the Mark contains the word element ‘CZ BERN 2’, it will likely go unnoticed or disregarded by the relevant public which fails to make the mark more distinct.
The only approach that could lead to the Mark to be acceptable for registration is if the mark has gained the status of acquired distinctiveness under Article 7(3) EUTMR.
