Motion Denied: General Court slams the window shut on motion mark for window movement
Marcel Pemsel
Motion Denied: General Court slams the window shut on motion mark for window movement
The number of applications for motion marks that the EUIPO has
received is below 400. This results in rather limited case law on this
type of mark. Recently, the General Court confirmed the ruling of the
Board of Appeal (“BoA”) of the European Union Intellectual Property
Office (“EUIPO”) (IPKat here)
that a motion mark showing the opening and closing of a window merely
displays a technical process and is, therefore, not eligible for
registration (case T-9/25, Kct v EUIPO (Mouvement d'une fenêtre rabattable)).
Background
Kct GmbH & Co. KG (“Kct”) filed for registration of EU trade mark no. 018906690 covering “vehicle windows for expedition vehicles” in class 12.
It was a motion mark, which showed the opening and closing of a window. The six-second video clip is available here. The “storyboard” looks like this:
The examiner of the EUIPO rejected the application due to lack of distinctiveness (Art. 7(1)(b) EUTMR).
Upon
appeal, the BoA dismissed the appeal reasoning that the trade mark only
showed a functional process (Art. 7(1)(e)(ii) EUTMR) and lacked
distinctiveness.
Kct filed an action with the General Court.
The General Court’s decision
The General Court dismissed the appeal.
The
judges recalled that Art. 7(1)(e)(ii) EUTMR prevents the registration
of trade marks that consist exclusively of the shape, or another
characteristic, of the goods which is necessary to obtain a technical
result.
The purpose of this provision is to prevent granting a
monopoly on technical solutions or functional characteristics of goods
because such signs are an obstacle for competitors. In particular, the
provision seeks to prevent the exclusive and permanent right, which a
trade mark confers, from extending indefinitely the life of other rights
(such as patents) that have limited periods of protection.
The
application of Art. 7(1)(e)(ii) EUTMR requires the determination of (1)
the essential features of the sign and (2) whether these features
correspond to a technical function.
1. Essential features
The
assessment of the essential features must be based on objective and
reliable information, e.g. from studies, expert reports, scientific
publications, patents, catalogues or websites.
In this case, the judges considered a mere visual examination of the trade mark sufficient:
It
consists of a sequence of simple and plainly stylized animated images
showing the opening and closing of a window in a light colour,
highlighted by black lines on a white background. The inner frame of the
window is secured with black struts, which become visible when the
window opens and disappear when it closes. The colour on the
downward-facing sides of the inner frame changes from black to a light
shade when the window is opened and becomes black again when the window
is closed, thus creating the interplay of light and shadow on the frame
as it moves.
On that basis, the judges concluded that the
essential features of the sign consist of the opening and closing of a
window, including the movement of the struts.
2. Technical function
The technical effect is the opening and closing of the window to allow light and air into the enclosed space.
The
struts have a purely technical function, namely to stabilize and
reinforce the window and support the forward-moving window sash.
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3. Kct’s arguments
a.
Kct argued that the change of colour of the inner part of the frame had
not been taken into account. The judges responded that this “feature”
merely represented a shadow, that appears and disappears, depending on
the motion of the window. It is a non-essential characteristic of the
sign.
b. The Court was also not convinced by Kct’s argument that
the struts were not technically required because there are technical
alternatives. By reference to settled case law of the Court of Justice
of the EU (“CJEU”), the judges countered that it is not decisive whether
alternative technical solutions exist as long as the solution at issue
(as represented in the trade mark) serves a technical function.
Otherwise, the applicant could prevent competitors from using identical
or similar signs and, therefore, technical solutions.
c. Kct
contended that the movement of the inner frame and the appearing and
disappearing of the struts was imaginative because such elements are
unusual for consumers. The Court replied that the relevant public’s
perception is not a decisive factor in the assessment of Art.
7(1)(e)(ii) EUTMR.
d. The BoA rejected KCT’s argument that the
movement of the window was unique. The conditions of Art. 7(1)(e)(ii)
EUTMR do not have to be assessed on the basis of the perception of the
relevant public or market conditions. Further, it could not be assumed
that consumers had the technical knowledge to assess a technical feature
of a product.
Comment
The General Court’s
decision confirms that motion marks face the same hurdles as other types
of marks. While motion marks offer a dynamic way to represent a brand,
this case makes it clear that if the motion simply depicts a technical
process - no matter how “imaginative” or “unusual” it is - it cannot
bypass the prohibition on monopolizing functional solutions.
There are four takeaways from this decision:
- No complex technical result required: Art. 7(1)(e)(ii) EUTMR does not only cover “highly” or “complex” technical results but also rather simple ones like opening and closing a window.
- Objective assessment over public perception: The Court reaffirmed that the perception of the relevant public is not decisive when assessing technical functionality. According to the CJEU it can “only” be a useful criterion – but presumably only to justify denying protection but not granting it.
- Alternative solutions are irrelevant: If the existence of alternative solutions could lead to registration, it would probably not take long until all technical solutions to a problem were registered as trade marks, which would prevent competitors from using any technical solution.
- Non-essential features are non-essential: Although the wording of Art. 7(1)(e)(ii) EUTMR requires a sign to “consist exclusively” of the shape or another characteristic that is necessary to obtain a technical result, settled case law considers it sufficient that only the essential elements are technical in nature. Not truly “exclusive” but it is the CJEU’s case law.
The cat picture is by Alla Dokova and used under the licensing terms of pexels.com.