• Canada Goose sought to register a figurative mark comprising 16 representations of geese for Class 25 goods
• The EUIPO examiner rejected the application, stating that the mark was “nothing more than ornamentation, a banal decorative goose pattern” 
• The Board of Appeal disagreed, notably finding that the sign did not feature a level of simplicity that would rule out its protection as a trademark 

On 19 March 2024 the Fourth Board of Appeal issued its decision in Case R 1959/2023-4 relating to Canada Goose International AG’s EU trademark application No 18 842 375. The Board of Appeal overturned the examiner’s finding that the mark was devoid of any distinctive character under Article 7(1)(b) of Regulation 2017/1001. 

Background

Canada Goose applied to register the figurative sign depicted below as an EU trademark for Class 25 goods (namely, items of clothing, underwear and footwear):

The examiner refused the application on various bases, including the following:

(a) The figurative sign was not capable of functioning as a distinctive sign:

1. To be regarded as distinctive, the positioning of the geese would require an “analytical examination” level of observation from the average consumer, which would be unrealistic.
2. The mark represented a simple pattern (“an ornamental feature”), even if it was not to actually be used as a pattern in a repetitive manner. It would be unlikely to capture the attention of consumers and be perceived as a trademark.

(b) The sign was similar to graphic depictions frequently used on clothing, footwear or underwear:

1. An internet search showed frequent use of goose images as a decorative pattern: the relevant public would be accustomed to similar patterns in graphics from competitors and would be unlikely to note a distinct commercial origin for this sign.
2. The pattern at issue would likely cover the surface of these goods and therefore correspond to the outward appearance of them. To be regarded as distinct, the mark would need to depart significantly from the norms and customs of the clothing/fashion sector. There was no evidence that the figurative mark had distinctive character in this sector, such that it would be viewed independently from its design function. 

Appeal

Appealing this decision, the applicant raised the following arguments:

In relation to (a):

1. The applicant did not claim any abstract undefined pattern of a bird-like animal, but a well-defined and distinctive fanciful constellation of images of a specifically stylised goose. 
2. Whether or not the figurative mark was a pattern, it still met the minimum requirements for distinctiveness, as shown by previously accepted applications.
3. The device of an animal could be distinctive for goods in Class 25.

In relation to (b):

1. The internet search examples were insufficient, random and of entirely different-looking birds, which were positioned differently.
2. The average customer would not exclusively perceive the mark through its design function. The applicant referred to Paragraph 18 of the board’s decision of 3 October 2019 in Case R 2368/2018-1 (pattern consisting of a variety of shapes, designs, colour and repeated letters ‘F’, ‘A’, ‘O’), namely that “[…] the decorative function of the mark is not incompatible with a distinctive function […]”. 
3. It was incorrect to say that the sign was non-distinctive for clothing, merely because an image of a goose (or bird-like animal) had been printed on clothing as decoration, as supported by the decision dated 23 March 2021 in Case R 2376/2020-4 (device of a tank). This decision highlighted that the mere possibility that certain goods (eg, stickers and clothing) may be decorated with a wide variety of decorative motifs (ie, objects) cannot mean that all kinds of objects are automatically non-distinctive for the goods at issue. 

Board of Appeal decision

The Board of Appeal agreed with the applicant and concluded that the sign had reached the threshold of distinctiveness required under Article 7(1)(b). Its reasoning included the following:

1. The repetitive character and the way the different elements of the sign were structured meant that it would be perceived by the relevant public as a representation of a particularly interesting or attractive detail of the Class 25 goods in question. 
2. The sign did not feature a level of simplicity that would rule out its protection as a trademark by being perceived as nothing more than a simple decoration on clothing and footwear. It consisted of 12 stylised representations of geese, specific in shape and completely unrelated to the goods. They were all clearly visible and a further “special touch” was given by their organised arrangement, with half of them looking to the right and the others to the left, with four little additional geese in the corners of that compilation.
3. The internet images that the examiner had shown did not rule out distinctiveness: the examiner could have shown many other products being decorated with the images of many other things since that is simply how the goods in Class 25 appear on the market. 
4. If a mark has a decorative function and also enables the consumer to distinguish the product bearing it from the same product having a different trade origin, the mark is not devoid of distinctive character. 

Comment

The decision illustrates the minimum degree of distinctiveness required to avoid a refusal under Article 7(1)(b). A key issue in this case was whether the quality of being “decorative” presupposes a lack of distinctiveness, and this decision confirms that the answer is “no”. Further, the decision confirms that, where a mark is a three-dimensional mark, it is irrelevant whether it is applied for as a figurative or pattern mark, because the principles for assessment are the same.

This article first appeared in WTR Daily, part of World Trademark Review, in June 2024. For further information, please go to www.worldtrademarkreview.com.