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The classic Volkswagen (VW) camper van is everywhere these days, its image adorning anything from clothing, tea towels and bedlinen to coffee mugs, fold out chairs and beach windbreaks. Many a time the VW badge will be replaced with some other circular motif, often a peace symbol, such that lifting the appearance of this beloved bus may, to some, look to be fair game.
Interesting then, is VW’s registration of the shape of its camper van as a 3D trade mark, and their recent victory in the European Union based on this, in an appeal to the EUIPO Boards of Appeal. This related to their opposition to European Flipper / Pinball Factory GmbH’s EU trade mark application to register the word and figurative trade mark below:
for goods including camping stoves, camping furniture and camping grills, but also for camping vehicles and campervans and for the rental of recreational vehicles.
VW were initially unsuccessful in their opposition to the above mark, which they based on EU registered trade mark rights in the 3D / shape trade mark below:
for identical or similar goods and services and claiming a likelihood of confusion, as well as alleging that the earlier marks enjoyed a high degree of recognition among the relevant public in connection with, at least, ‘vehicles’.
In its decision in February 2021, the EUIPO Opposition Division rejected the opposition, saying that:
“The earlier marks are the true-to-life depiction of a camper van, or bus, from five different perspectives which, taken individually, are distinctive, at most, to a very low degree in relation to vehicles and the rental of vehicles”.
As for the trade mark under opposition, the Opposition Division saw the figurative element, as the front view of a vehicle, to be of very low distinctiveness. Although it was recognised that the word element “Cultcamper” might be non-distinctive to the English-speaking consumer; it was seen that, for the non-English-speaking public, it would be that word element of the applicant’s mark which would differentiate it from VW’s marks. The necessary likelihood of confusion was found to be absent.
Furthermore, VW’s evidence was considered insufficient to demonstrate that the earlier marks had acquired a high degree of distinctiveness through use, so that the assessment of the distinctiveness of the earlier marks rested on their distinctiveness per se.
VW appealed the decision to the EUIPO Boards of Appeal, arguing that the word element of the contested mark was descriptive and explicitly referred to VW’s own campers and their cult status. They argued that it was the visual presentation and characteristics of the figurative elements which came to the fore against the descriptive verbal elements when comparing the two marks. In the mark under opposition, the front of the bus was characterised by the horizontally split windscreen, the rectangular base shape with slightly rounded edges, circular headlights, the circular peace sign (logo) in the middle and the curved V-shape on the bonnet. These were all elements in common with the distinctive characteristics of the opponent’s marks, copying the front view of the VW shape in an identical manner, whilst the location of the famous VW logo was chosen to position a peace-sign, as a simple substitution of one circular logo by another.
VW also submitted further evidence in support of the increased distinctiveness/well-known character of its shape mark, but this was considered insufficient and the matter was again considered based on assessment of the inherent distinctiveness of the earlier marks.
In its decision of 15 December 2021, the Second Board of Appeal found in VW’s favour and was persuaded by their arguments upon the most distinctive elements to compare in the respective marks. They recognised that the earlier 3D marks represent a camper van, or bus, from five different perspectives. Where the Opposition Division had held that those five perspectives ‘taken individually, are distinctive, at most, to a very low degree in relation to vehicles and the rental of vehicles’, the Board found that those five perspectives should not be considered individually, but represent the same object from different perspectives. The Board acknowledged that a 3D mark representing a camper van should be considered as lacking distinctive character “if it does not depart significantly from the norms and customs of the sector concerned”, but no observations had been filed by the applicant, let alone to support that VW’s shape did not depart significantly from said norms and customs.
The Board found the 3D marks to be distinctive “in particular, because the front of the van is characterized by a divided windshield and the curved V-shape on the bonnet with the circular headlights on each side”. The front view of the earlier 3D mark was seen to be almost identically reproduced in the figurative element of the contested sign. The differences lay “in the small peace symbol, which is hardly noticeable, and the colour in the contested sign.”
The Board concluded that:
“faced with the image of the mark applied for, the relevant English-speaking public in the EU will perceive that mark as another version of the earlier marks, rather than as a separate trade mark with a different commercial origin.”
The appeal was upheld and the application rejected in its entirety.
Stay in shape!
With shape trade marks being notoriously difficult to protect, that an opposition to a 2D mark has been upheld in this way, based on a 3D mark, is very encouraging for EU trade mark owners, as they strive to protect their brand identities in just about every shape and form they can.
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