With decision of October 11, 2023, the EUIPO’s fourth board of appeal recognized the distinctiveness of the sign representing the Haribo gummy bear, annulling the previous decision of the examiner who, on the contrary, had considered it to be lacking of distinguishing features.
The case
On October 26, 2021 Rigo Trading S.A. (parent company of Haribo group) designated the European Union in its international registration for the figurative trademark Haribo, representing the outline of Haribo gummy bear, in a stylized and bidimensional version. The application was presented in relation to a broad set of goods, all unrelated to sweets, such as clothing articles, mirrors, jewelry, hair clips, umbrellas, bags and backpacks.
After the notification of a first provisional refusal, the EUIPO’s examiner confirmed the rejection of the application, stating that the trademark applied for lacked distinctiveness. According to the examiner, the appearance of the trademark did not significantly depart from the common use or from the uses of the relevant industry, because the representation of a stylized bear is commonly used for decorative, artistic or aesthetic purposes. Not even the characteristics of the requested sign (stereotypical representation of a shell enclosing a stylized smiling bear) would have added distinctive character to the overall sign. Therefore, the sign at use would have been associated exclusively to the shape of the product itself or it would have been perceived by consumers only as a decorative element.
In both cases, it would not have been perceived as an indication of origin.
Haribo’s defensive argumentations
The applicant appealed the decision before EUIPO’s appeal board stating, among others, that the requested sign had at least a minimum degree of distinctiveness.
The company highlighted that, contrary to what stated by the examiner, the trademark is not constituted by a simple decorative element or by a representation of the shape of the claimed products. The requested sign, as a matter of fact, is a figurative trademark constituted by the outline of the famous gummy bear invented by Haribo in 1978 which become today an iconic product, absolutely distinguishable from similar goods marketed by competitors.
The plaintiff company moreover stated that, applied to goods such as T-shirts, jewelry articles or bags, the sign would surely be perceived by the audience as an indication of origin and not as a representation of the shape of the goods bearing it or as a mere decoration.
The motivations of the EUIPO Board
EUIPO accepted the defenses of the plaintiff company, stating that the sign at issue has distinctive character.
Firstly, EUIPO excluded that the sign could be perceived by the average consumer as the shape of the product. As a matter of fact, none of the products for which the trademark is requested falls into the commodity sector of sweets, while the sign conveys the impression of a material – edible gelatin – that the average consumer knows not to be the material of which jewels, hair clips, mirrors or bags are made. In addition, the graphic representation of the trademark consists of the stylized shape of a bear, which is not linked to the goods included in the claimed classes.
Secondly, with reference to the consideration of the examiner according to which the sign at issue would be perceived as a mere decorative element, the EUIPO recalled that, in general terms, a distinctive sign can also have a decorative function.
Nevertheless, in the case under exam, the sign at issue presented a series of characteristics – such as the position and the shape of limbs, nose and smile – which together conferred the trademark at least a minimum degree of distinctiveness.
As a consequence, EUIPO considered the appeal to be well-founded and annulled the appealed decision.
Ilaria Feriti