EU Court Rejects Registration of Loudspeaker Shape as Community Trade Mark

On 6 October 2011, the General Court of the European Union (the “GC”) handed down its judgment in a case pitting Bang & Olufsen A/S (“Bang & Olufsen”) against the Office of Harmonisation in the Internal Market (“OHIM”) concerning the registration of a three-dimensional sign as a Community trade mark (“CTM”) for – amongst others – loudspeakers and music furniture (See, picture).

In 2003, Bang & Olufsen filed an application to register the shape of a loudspeaker as a CTM with the OHIM. The OHIM refused to register the CTM maintaining that the sign did not have any distinctive character and had not acquired distinctiveness through use and thus fell short of the requirements of Article 7(1)(b) of Regulation No 40/94 of 20 December 1993 on the Community trade mark, now replaced by Regulation No 207/2009 on the Community Trade Mark (the “CTM Regulation”). Under Article 7(1)(b) of the CTM Regulation, registration as a CTM is refused for trade marks that are devoid of any distinctive character. In December 2005, upon appeal by Bang & Olufsen, the GC concluded that the OHIM had misconstrued the wording of Article 7(1)(b) of the CTM Regulation. According to the GC, a minimum degree of distinctive character is sufficient to render the ground for refusal set out in that provision inapplicable.

Following the GC judgment, the OHIM adopted a new decision on 10 September 2008 again rejecting Bang & Olufsen’s trade mark application. This time, the application was rejected on the basis of Article 7(1)(e)(iii) of the CTM Regulation. Indeed, the OHIM found that the sign concerned consisted solely of the shape that gives substantial value to the goods. As a result, Bang & Olufsen again appealed to the GC to annul the second OHIM decision as well.

In its judgment of 6 October 2011, the GC dismissed Bang & Olufsen’s appeal. The GC first considered that Article 4 of the CTM Regulation clearly stipulates that the shape of goods can constitute a CTM. However, the GC underlined that signs that consist exclusively of the shape of goods that gives substantial value to the goods cannot be registered given that the granting of a monopoly on those shapes should be prevented.

In relation to the goods at hand, the GC considered that the design of Bang & Olufsen’s loudspeakers plays a significant role with regard to the consumer’s choice. Indeed, Bang & Olufsen’s trade mark application reveals that the design forms a crucial aspect of its branding and increases the value of the product. Moreover, according to the GC, it also follows from extracts of websites on which Bang & Olufsen’s loudspeakers are advertised that the aesthetic characteristics of their shapes are an important selling point. Accordingly, the GC held that the OHIM had not made any error when it decided that registration of the shape at issue had to be refused.