THE BOARDS OF APPEAL
DECISION of the Fourth Board of Appeal of 9 December 2016
In Case R 1383/2016-4
Marvel Characters, Inc. 500 South Buena Vista Street Burbank CA 91521 United States of America Applicant / Appellant represented by MITSCHERLICH, Patent- und Rechtsanwälte, PartmbB, Sonnenstraße 33, D-80331 München, Germany
APPEAL relating to European Union trade mark application No 15 238 025
THE FOURTH BOARD OF APPEAL
composed of D. Schennen (Chairman and Rapporteur), C. Bartos (Member) and E. Fink (Member)
Registrar: H. Dijkema
gives the following
Language of the case: English
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Decision
Summary of the facts
1 On 18.3.2016, the appellant sought to register the figurative mark in black and
white
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as a European Union mark for the goods and services (relevant goods in bold):
Class 9 – Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus; computer hardware and computer software, computer peripherals; operating and user instructions stored in digital form for computers and computer software, in particular on floppy disks or CD- ROM; eyeglasses and sunglasses; protective helmets for sports; life jackets; cinematographic films (exposed), exposed films; animated cartoons; audio discs; audio recordings; audio and video recordings; audio speakers; binoculars; calculators; camcorders; cameras; CD-ROMs; CD-ROM drives (as part of the computer); CD-ROM writers (as part of the computer); cellular telephones; cellular telephone accessories; cellular telephone cases; cellular telephone covers; chips containing musical recordings; face plates for cellular telephones; compact disc players; compact disc recorders; compact discs; computer game programs; computer game cartridges and discs; computer keyboards; computer monitors; computer mouse; computer disc drives; cordless telephones; decorative magnets; digital cameras; digital video and audio players; downloadable electronic publications; downloadable software applications for mobile devices; DVD players; DVD recorders; digital versatile discs; digital video discs; pre-recorded optical and magneto-optical discs; optical and magneto-optical disc players and recorders for audio, video and computer data; electrical and optical cables; electronic personal organizers; eyeglass cases; flotation vests; graduated rulers for office and stationery; headphones; karaoke machines; microphones; MP3 players; modems (as part of a computer); mouse pads; motion picture films; musical recordings; pagers; personal stereos; personal digital assistants; printers; radios; snorkels; swimming goggles; swim masks; telephones; television sets; video cameras; video cassette recorders; video cassette players; video game cartridges; video game discs; video cassettes; videophones; video recordings; walkie-talkies; wrist and arm rests for use with computers.
Class 16 – Paper, cardboard; goods made from paper and cardboard, namely printed publications, office and school supplies, temporary tattoos, shopping bags; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not
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included in other classes); printers' type; printing blocks; address books; almanacs; appliqués in the form of decals; appointment books; art prints; arts and craft paint kits; autograph books; baby books; ball point pens; baseball cards; binders; bookends; bookmarks; books; bumper stickers; calendars; cartoon strips; crayons; Christmas cards; chalk; chalk boards; children's activity books; coasters made of paper; coin albums; colouring books; colouring pages; colour pencils; comic books; comic strips; coupon books; decals; decorative paper centerpieces; diaries; drawing rulers; dry erase writing boards; embroidery designs patterns; envelopes; erasers; felt pens; flash cards; gift cards; gift wrapping paper; globes; greeting cards; guest books; magazines; maps; markers; memo pads; modelling clay; newsletters; newspapers; note paper; notebooks; notebook paper; paintings; paper flags; paper cake decorations; paper party decorations; paper napkins; paper party bags; paperweights; paper gift wrap bows; paper pennants; paper place mats; paper table cloths; plastic party bags; pen or pencil holders; pencils; pencil sharpeners; pen and pencil cases and boxes; pens; periodicals; photograph albums; pictorial prints; picture books; portraits; postcards; posters; printed awards; printed certificates; printed invitations; printed menus; printed patterns for costumes; publications in the field of comic book stories and artwork; recipe books; rubber stamps; sandwich bags; score cards; stamp albums; staplers; stickers; trading cards; ungraduated rulers; writing paper; writing implements; letter openers of precious metal; decorative glitter pens for stationery purposes.
Class 25 – Clothing, footwear, headgear; belts; aprons; athletic shoes; bandanas; baseball caps; beach cover-ups; beachwear; bibs; bikinis; blazers; boots; bow ties; bras; caps; chaps; cloth bibs; coats; dresses; ear muffs; gloves; golf shirts; Halloween costumes; hats; head bands; head wear; hosiery; infantwear; jackets; jeans; jerseys; kerchiefs; leotards; leg warmers; mittens; neckties; night shirts; night gowns; overalls; pajamas; pants; panty hose; polo shirts; ponchos; rainwear; robes; sandals; scarves; shirts; shoes; skirts; shorts; slacks; slippers; sleepwear; socks; stockings; sweaters; sweat pants; sweat shirts; swimsuits; tank tops; tights; T-shirts; underwear; vests; wrist bands; bolo ties with precious metal tips.
Class 28 – Games and playthings; gymnastic and sporting articles (not included in other classes); playing cards; action skill games; action figures and accessories therefor; board games; card games; children's multiple activity toys; badminton sets; balloons; baseball bats; basketballs; bath toys; baseballs; beach balls; bean bag dolls; building blocks; bowling balls; bubble making wands and solution sets; catcher's mitts; chess sets; children's play cosmetics; Christmas stockings; Christmas tree decorations; collectable toy figures; crib mobiles; crib toys; disc toss toys; dolls; doll clothing; doll accessories; doll playsets; electric action toys; equipment sold as a unit for playing card games; fishing tackle; golf balls; golf gloves; golf ball markers; hand held unit for playing electronic games; hockey pucks; inflatable toys; jigsaw puzzles; jump ropes; kites; magic tricks; marbles; manipulative games; mechanical toys; music box toys; musical toys; parlor games; party favors in the nature of small toys; party games; plush toys; punching balls; puppets; roll playing games; roller skates; rubber balls; skateboards; snowboards; snow globes; soccer balls; spinning tops; squeeze toys; stuffed toys; table tennis tables; target games; teddy bears; tennis balls; toy action figures; toy bucket and shovel sets; toy masks; toy mobiles; toy vehicles; toy scooters; toy cars; toy model hobbycraft kits; toy figures; toy banks; toy model train sets; toy trucks; toy watches; water squirting toys; wind-up toys; water slides; yo-yos; paper party favors; paper party hats.
Class 41 – Education; providing of training; entertainment; sporting and cultural activities; production, presentation, distribution, and rental of motion picture films; production, presentation, distribution, and rental of television and radio programs; production, presentation, distribution, and rental of sound and video recordings; entertainment information; production of entertainment shows and interactive programs for distribution via television, cable, satellite, audio and video media, cartridges, laser discs, computer discs and electronic means; production and provision of entertainment, news, and information via communication and computer networks; providing online entertainment, namely, non-downloadable comic books and graphic novels; amusement park and theme park services; educational and entertainment services rendered in or relating to theme parks; live stage shows; presentation of live performances; theater productions; entertainer services; online interactive entertainment; online games.
2 On 8.6.2016 the examiner took the contested decision to refuse the application in part pursuant to Article 7(1)(b) EUTMR, namely for the bold-marked goods in Class 28.
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3 The examiner stated that the EUTM application was devoid of any distinctive character (Article 7(1)(b) EUTMR), as it represented a large, costumed action figure in an aggressive stance, which only consisted of a combination of features (without specifying which features) that are typical for the goods in question. The mark was not markedly different from various basic action figures commonly used in trade, but simply a variation thereof. The consumer would not tie this ordinary graphic representation to a particular applicant. The mark was not striking or unusual.
4 In reply to the applicant’s observation the examiner added: The mark was a variation of a ‘classic’ figure. A super or amazing power might distinguish a person form another, but in the realm of action figures superhuman abilities/ powers were banal. It was on the basis of acquired Office experience that the examiner could make these findings, and the burden to show otherwise would lie on the applicant. The numerous other appeal decisions or EUTM registrations for toys or figurines cited by the applicant were not comparable.
5 The applicant filed a notice of appeal against the contested decision on 28.7.2016, followed by a statement of grounds on 5.10.2016. It maintained that the mark was distinctive.
6 In particular the applicant observed that the mark did not show a true-to-life depiction of a human, but a fanciful comic or cartoon character. It disputed the attempt to make a distinction between ‘action figures’ and cartoon characters, given that for the later objections such as those in the contested decision were never made.
7 Most of its reasoning addresses other decisions of the Boards of Appeal (including from the 4th Board) and numerous other registrations for, allegedly comparable, comic characters or the like. Dismissing them as non-binding would amount to a procedural violation.
8 The applicant requests:
(a) to abandon the objections; (b) to register the EUTM application for all goods and services; (c) to reimburse the appeal fee.
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Reasons
Admissibility
9 The request to register the EUTM application (point 8 (b)) is inadmissible, since at this stage of the proceedings registration cannot take place; the application cannot be registered without allowing third parties to file an opposition (Article 41 EUTMR).
10 The request to abandon the objections (point 8 (a)) must be read to comprise the request to annul the contested decision to the extent the EUTM application was refused.
11 The request to reimburse the appeal fee is admissible, but not well founded.
Article 7(1)(b) EUTMR
12 For a trade mark to possess distinctive character for the purposes of Article 7(1) (b) EUTMR, it must serve to identify the product in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish that product from those of other undertakings (29/4/2004, C- 456/01 P & C-457/01 P, ‘Tabs/Henkel’, EU:C:2004:258, § 34; 8/4/2003, C-53- 55/01, ‘Linde’, EU:C:2003:206, § 40).
13 The fact that the representation of the mark was filed as a figurative mark does not alter this assessment (22/6/2006, C-25/05, ‘Gold-coloured sweet wrapper’, § 29; 19/9/2001, T-30/00, ‘Washing tablet’, EU:T:2001:223, § 49; 19/9/2012, T-327/10, ‘Karomuster’, EU:T:2012:436, § 47).
14 Yet, in respect of a mark consisting of the graphic representation of the goods themselves, the perception of the relevant public is not necessarily the same in relation to such a mark as it would be in relation to a word or figurative mark not representing the appearance of the product. Whilst the public is used to recognising the latter marks instantly as signs identifying the product, this is not necessarily so where the sign is indistinguishable from the appearance of the product itself or its packaging (19/9/2001, T-30/00, ‘Washing tablet’, EU:T:2001:223, § 49; 7/10/2004, C-136/02 P, ‘Maglite’, EU:C:2004:592, § 30). Such a shape of the goods must depart significantly from the norm or customs of the sector in order to fulfil its essential function of indicating origin (29/4/2004, C-456/01 P & C-457/01 P, ‘Tabs/Henkel’, EU:C:2004:258, § 39; ‘Maglite’, § 31; 12/1/2006, C-173/04 P, ‘Standbeutel’, EU:C:2006:20, § 30). These criteria apply even when the mark was filed as a figurative mark, as long as the representation of the mark merges with the appearance of the claimed goods.
15 From the outset it must be criticised that the contested decision avoided a clear statement as to whether these criteria would apply, i.e. as to whether the representation was deemed to be the one of a three-dimensional object. The contested decision merely looked at the goods ‘toys’ or, for that matter, action figures, and derived from this that the representation showed such a ‘toy’ or action figure.
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16 Yet, such cannot be presumed simply on the basis of the consideration that claimed goods (or some of them) could take the appearance of the graphic representation as filed. The reasoning that a figurative mark showing the goods must be dealt with on the same footing as a three-dimensional mark for the same graphic representation rests on the consideration that such a figurative mark would merely disclose the goods e.g. in advertising or on a (closed) packaging.
17 Such a consideration cannot be made here, as the applied-for mark is perfectly fit to constitute a figurative mark in the narrow sense. Moreover, such a consideration requires that the ‘shape’ of the goods in issue is known to the public. Simply depicting an object that could take a three-dimensional shape does not lead to that. In the present case a toy figurine taking a shape as represented is as arbitrary as the graphics itself is.
18 Putting it sharply, the reasoning of the examiner simply says that the goods are toy figurines and the graphic representation shows a toy figurine. This is entirely mistaken. Toy figurines can take any (distinctive or non-distinctive) form. The examiner’s reasoning means that no representation of toy figurines could be registered in Class 28. It means that the non-distinctiveness is directly inferred from the definition of the goods, and not, as it should be, from the characteristics and elements of the graphic representation of the mark.
19 A ‘toy’ is something to play with. Any object could serve that purpose. In order to reason a lack of distinctiveness for ‘toys’ the examiner would have to establish that the representation of the mark represents a typical, already known type of a toy. This was not done.
20 The graphic representation of the mark shows a black and white drawing of a supernatural humanoid or mutant in aggressive position, but not amounting to a true-to-life depiction of a human being.
21 If such a character appears in connection with Class 16 goods, such as on or in comic books, it easily ‘distinguishes’ itself from other characters in the same comic series (such as the one in Case R 1380/2016-4), or from completely different cartoon characters such as Asterix or Donald Duck. If then the same character appears as a three-dimensional object, it retains the same distinctive- ness, as it will be simply perceived as a three-dimensional embodiment of that two-dimensional representation. And if then such a three-dimensional object appears on the market, it can be played with, collected, or serve as a decoration on the chimney board. Moreover, the term ‘action figure’ is indeed elusive as the character itself – whether two-dimensional, as a drawing or, supposedly, three- dimensional as an object – does not perform any ‘action’. Rather, the consumer will infer the ‘action’ character from the ‘actionable’, powerful, supernatural way the character is depicted.
22 The examiner did not show, and did not even attempt to show, that similar figurines or toys already exist on the market. So it cannot be said that the mark applied-for is ‘banal’, ‘classic’ or ‘commonplace’.
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23 Instead, the Board finds that the applied-for mark shows a graphic design which is endowed with sufficient distinctive character, even for ‘toy figures’, collectable or not, and ‘action figures’, not to mention ‘water squirting toys’ or ‘jigsaw puzzles’.
24 To sum up, Article 7(1)(b) EUTMR is not applicable and the EUTM application shall be accepted for publication pursuant to Article 39 EUTMR also for the relevant goods in Class 28.
Appeal fee
25 To reach this result, a discussion of other appeal cases or EUTM registrations was neither necessary nor helpful. Indeed, the present EUTM application shall be allowed to proceed not because it would be on a par with other cases, but on the basis of the assessment of its graphic features. It is true, yet, that the result is in line with the decisions of this Board cited by the applicant such as R 1014/2014-4 and R 2387/2013-4.
26 Yet, not discussing those other cases in detail did not amount to a procedural violation. What matters is the correctness of the assessment of the distinctive character and not the comparative analysis of other marks or cases (27/2/2002, T-106/00, ‘Streamserve’, EU:T:2002:43, § 66 to 69). On this point there was no procedural violation (cf. 9/7/2008, T-304/06, ‘Mozart’, EU:T:2008:268, § 56).
27 Also in other aspects the Board cannot see a procedural violation. The applicant was heard by the examiner and was able to bring forward all its arguments. That the Board disagrees with the reasoning of the contested decision does not violate Article 75 EUTMR either (cf. 26/9/2014, R 2387/2013-4, ‘Plush toy’, § 14).
28 Absent a procedural violation the conditions under which a reimbursement of
the appeal fee can be ordered under Rule 51 (b) CTMIR are not fulfilled.
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Order
On those grounds,
THE BOARD
hereby:
1. Annuls the contested decision; 2. Allows the EUTM application for publication pursuant to Article 39
EUTMR also for the bold-marked goods in Class 28; 3. Rejects the request for reimbursement of the appeal fee.
Signed
D. Schennen
Signed
C. Bartos
Signed
E. Fink
Registrar:
Signed
H. Dijkema
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