Trade mark registrability developments in the EU General Court: Key Cases to Watch

Trade mark registrability is a constantly evolving area of law, as brand owners continue to innovate and push boundaries in seeking the best possible protection for their valuable brand assets in a crowded and competitive marketplace. Several recent challenges to decisions of the European Union Intellectual Property Office (EUIPO) illustrate this, with cases on the validity of trade marks covering Ferrari's TESTAROSSA legacy trade mark, shape marks for Rubik's Cube, and position marks covering "I" and a red heart on clothing.

Unconventional trade marks such as shapes, positions, sounds, smells, colours, patterns and animations are of increasing interest as a way for businesses to ringfence their brand and protect brand elements outside the traditional name or logo. However, to be registrable the unconventional trade mark must have a distinctive character and operate as a badge of origin.

Legacy trade marks are those brand elements which have such a reputation they remain in the minds of consumers even after sales have stopped. Such marks arguably have more commercial importance than ever before, with the current cultural trend valuing the nostalgia factor of big brands from times past, but registrations can be difficult to maintain in the face of requirements that trade marks must be genuinely used in order to remain valid.

The CJEU General Court's judgments in these cases, due early July, will not only affect the high profile parties involved, but are also likely to establish precedents that will affect the scope of trade mark registrability under EU law in relation to unconventional and legacy trade marks. Businesses that utilise clever brand protection strategies should stay alert to these developments so they can maximise the value of their brand assets.

Will Ferrari's TESTAROSSA stand the test of time?

(Cases T-1103/23 and T-1104/23)

One of the most anticipated cases concerns Ferrari's trade mark TESTAROSSA. Since 2007, Ferrari has held an international trade mark registration designating the EU for TESTAROSSA covering automobiles, spare parts and accessories, as well as model cars. The TESTAROSSA brand is associated with a sports car manufactured by Ferrari in the 1980's and 1990's which became something of a cultural icon due to its appearance in TV and video games. However, in 2023 the EUIPO found that Ferrari had forfeited its rights to this registered trade mark due to a lack of "serious use" from 2010 to 2015.

Trade marks must be put to genuine use by the owner on the relevant goods/services for which the trade marks are registered – if they are not used within a five year period, they may become vulnerable to revocation (i.e. a third party could apply to revoke the registrations either in full or in part). The General Court's decision to be released on 2 July may have implications for threshold for what constitutes "serious use" in European trade mark law. The case reflects the evolving nature of the trade mark registers and the commercial reality that trade marks must be appropriately cared for in order to maximise their value. Brand owners with legacy trade marks that are important to their business, but which may not be in use on current products, should take note and implement strategies to protect these valuable brand assets.

A Rubik's cube dilemma

(Cases T-1170/23, T-1171/23, T-1172/23, T-1173/23)

Four cases slated for judgment on 9 July involve the 3D puzzle Rubik's Cube. Spin Master Toys UK owns shape trade marks protecting the 3D geometrical arrangement of its surfaces with a particular coloured grid structure. The registrations were challenged by Verdes Innovations SA, alleging invalidity.

Shape marks are an unconventional trade mark type consisting of, or extending to, a three-dimensional shape, including containers, packaging, the product itself or its appearance. Such marks cover not only shapes per se, but also shapes that contain other elements, such as word elements, figurative elements or labels. Successfully achieving registration can be difficult, but the trade marks can be highly valuable assets particularly in the consumer sectors of food, beverage, and household items, as well as in the pharmaceutical market.

The EUIPO considered that the colours of the squares on each side of the cube were an essential feature of the trade mark and an integral part of its shape. Accordingly, the combination of the six different colours was necessary to obtain a technical result and the EUIPO concluded that the trade marks had been registered contrary to law.

Spin Master Toys UK challenged these decisions before the General Court of the European Union, arguing that the contested trade mark has essential characteristics which are not constituted exclusively by the shape and which, in any event, are not necessary to obtain a technical result. Of real significance for toy companies, as well as consumer goods business more generally, the precedent may clarify and expand on the law applicable to shape trade mark registrability.

I heart position trade marks

(Cases T-304/23, T-305/24, T-306/24)

In 2022, the German company sprd.net applied to the EUIPO to register three EU trade marks as 'position marks' for clothing. The applications are for a logo combining a capital "i" and a red heart on clothing, placed on a garment on the left breast, on an inner label of a garment, or on an outer garment at the nape of the neck.

Position trade marks are another unconventional trade mark type, consisting of the specific way in which the mark is placed on or affixed to the product. They are fairly uncommon and can be difficult to obtain. To be registrable, the relevant consumer must be able to identify the trade mark as a sign that is different from the normal appearance of the products themselves, and the positioning of the mark upon the goods must be likely to be understood as having a trade mark context.

The EUIPO rejected sprd.net's applications, citing a lack of distinctive character since the symbols would be interpreted as the expression "I like". Should the General Court's 9 July judgment be in favour of sprd.net, it will open doors for companies looking to expand the ring-fencing of their overall brand using position trade mark registrations and could broaden what constitutes a distinguishable traded mark.