EU General Court Finds Body-builder Silhouette is Descriptive and Cannot Be Registered as Trade Mark

On 29 September 2016, the EU General Court (“GC”) ruled on the validity of a trade mark registration sought by Universal Protein Supplements Corp. (“UPS”) for the silhouette of a body-builder. The GC confirmed the finding of the Board of Appeal of the European Union Intellectual Property Office (“EUIPO”), which on 6 March 2015 had refused registration for this sign on the grounds that it was descriptive of the products and services in respect of which registration was sought.

The dispute arose after UPS filed, on 7 July 2014, an application to register a figurative sign depicting the silhouette of a body-builder as an EU trade mark. This application was dismissed by both the initial examiner and the Fifth Board of Appeal of EUIPO. UPS further appealed to the GC. In support of its action, UPS argued that Article 7(1)(c) of Regulation No 207/2009 on the Community trade mark (“the Trade Mark Regulation”) had been wrongfully applied.

Article 7(1)(c) of the Trade Mark Regulation sets out an absolute ground for refusal to register a sign as a trade mark when the sign consists exclusively of elements or indications that are descriptive of the characteristics of the goods or services in respect of which registration is sought. In its judgment, the GC stated that this should be assessed by reference to the perception of the relevant public and to the goods and services concerned.

In its assessment, the GC noted that the sign at issue consisted of a silhouette, represented in black, of a person adopting a typical body-building pose showing off the muscles of his body. On that basis, the GC ruled that the sign would undoubtedly be perceived by the relevant public as the representation of a body-builder. The GC then observed that the goods and services concerned – namely “nutritional elements” of Class 5, “clothing and footwear” of Class 25 and “on-line retail store service featuring nutritional supplements; health and diet-related products; clothing and shoes” of Class 35 – were all made or adapted for the practice of body-building. Therefore, the GC held that the EUIPO correctly decided that the trade mark applied for had a sufficiently direct and specific link with these goods and services for the sign to fall under the prohibition of Article 7(1)(c) of the Trade Mark Regulation. By its decision, the GC refuted three arguments put forward by UPS in support of its claim for trade mark protection.

First, UPS argued that the Board of Appeal had failed to consider the trade mark as a whole and that, because of the choice to stylise the silhouette of the body-builder in a particular pose and with specific proportions, it could not be attributed an “exclusively” descriptive character. In this respect, the GC first observed that the technique known as “silhouette” is not a particularly stylised form of representation. Moreover, the image was fairly realistic and featured a body-builder in a typical pose which highlighted the body’s muscles. Consequently, the GC ruled that no detail or characteristic in this image went beyond the standard depiction of a body-builder. The GC added that the possibility of drawing a body-builder in slightly different ways did not alter the descriptive character of the sign.

Second, UPS contended that depicting a body-builder in a specific, stylised and aesthetic way had several meanings and was not bound to relate only to body-builders or body-building. Therefore, UPS claimed that the trade mark at hand was at most allusive but not in any way descriptive. The GC observed, however, that the sign at hand was to be immediately and directly perceived by the relevant public as relating to body-building. It also recalled that even when a sign has several meanings, registration must be refused if at least one of these possible meanings designates a characteristic of the goods or services concerned. Hence, the GC dismissed this second argument as well.

Third, according to UPS, in view of the numerous ways in which body-builders can potentially be depicted, the trade mark applied for cannot be considered as monopolising any descriptive sign. UPS thus claimed that the public interest aim pursued by Article 7(1)(c) of the Trade Mark Regulation was not impaired. Once more, the GC rejected the argument. It held that the application of Article 7(1)(c) of the Trade Mark Regulation does not depend on the existence of a real, current or serious need to leave a sign free. The GC went on to state that registration of a trade mark must be refused under Article 7(1)(c) of the Trade Mark Regulation irrespective of whether other options to convey the message exist.

As a result, the GC dismissed the action in its entirety and refused registration for the trade mark, as it had done earlier this year for the shape of a Coca-Cola bottle (See VBB on Belgian Business Law, Volume 2016, No. 2, pp. 14 and 15, available at www.vbb.com). UPS can appeal this ruling to the Court of Justice of the European Union