Three-dimensional trademark: yes, to the registration of the iconic “Bulli” van

With decision of November 29th 2021, rendered in the proceeding R 2421/2022-1, the EUIPO (European Union Intellectual Property Office) returned to rule on the shape trademark accepting the appeal of a well-known German car manufacturer that challenged the rejection of the registration, as a three-dimensional trademark, of the iconic “Bulli” van.

On the basis of the rejection under exam, in the opinion of the European Office, there was the absence of the distinctive character pursuant art. 7 (1)(b) of the EU Regulation 2017/1001 (RMUE) in relation to the vehicles category.

The car manufacturer, therefore, brought an action against this rejection obtaining, from the First Commission of Appeal, the annulment of the contested decision.

Before examining the decision, it is important to recall that article 3 (3) (c) of the Execution Regulation 2018/626 defines shape trademarks as:“marks constituted by a three-dimensional shape, or comprising such a shape, including containers, packaging, the product itself or their aspect”.

The evaluation of the distinctive character in relation to these signs, also regulated by the above-mentioned art. 7 (1)(b) RMUE, does not apply stricter criteria compared to other types of marks.

Nevertheless, it is known that it is more difficult to ascertain the distinctive capacity of a three-dimensional trademark compared to the other types, given that these marks will not be necessarily perceived, by the relevant public, as similar to a denominative or figurative mark.

But that is not all. It is now well-established case law that – if a shape mark is constituted by the shape of the product for which the registration is requested – only a mark constituted by a shape that is significantly different from the norm or the customs of the sector will have the distinctive character necessary to obtain the registration.

Therefore, only a shape with the above-mentioned characteristics will carry out the essential function of the trademark, that is indicating the origin.

Now, the EUIPO first Commission of Appeal, recalling the described criteria, recognized that the contested sign has indeed many elements considered able to create an overall impression capable of carrying out the function of entrepreneurial origin and, therefore, to make the sign, as a whole, a registrable shape trademark.

In particular, among these elements, the EUIPO Commission considered how the particularity of the V-shape in the frontal part of the vehicle, as well as the overall rounded shape of the van, the presence of the rounded headlights and the ventilation slots, were all elements capable of making the relevant consumer recognize an indication of entrepreneurial origin in the form of the vehicle itself.

In brief, the shape was considered to differ significantly from the usual cars’ shapes, which is why the application for registration was referred to the Examination Division for the continuation of the registration process.

Giulia Mugnaini