In a further development in the world of virtual trade marks, the EUIPO Fourth Board of Appeal has recently held that a figurative representation of a virtual firearm is not sufficiently distinctive to be registered as a European Union Trade Mark (EUTM). We analyse the decision and the takeaways for brand owners who may be considering filing trade mark applications for virtual goods and services.
In February 2022, Colt CZ Group SE (Colt) applied for registration of the figurative mark below as a EUTM.
The application sought protection for:
- “Virtual downloadable goods, namely apparatus for recording, transferring, reproducing sound or image, computer programs targeting virtual firearms and accessories for online and online virtual worlds” in Class 9
- “Online shop services dedicated to virtual goods, namely virtual firearms” in Class 35, and
- “Entertainment, sporting and cultural services providing online virtual firearms for virtual use” in Class 41.
The EUIPO, in March 2022, refused the application on the basis that the mark lacked distinctive character. Colt filed submissions in response to the initial refusal. However, in December 2022, the EUIPO rejected the application for all of the goods and services applied for. In summary, the EUIPO held that:
- The application is an expression of a virtual firearm which is commonly used in connection with the goods and services for which protection is sought. It is a faithful image of a virtual automatic firearm which does not depart significantly from how it can and is generally represented.
- At a time of widespread use of IT, virtual gaming platforms, the metaverse and online shops in the 21st century, or the general use of entertainment, sports and cultural services, it is clear that the goods and services are used by persons in Classes 9, 35 and 41 without prior detailed knowledge of individual virtual weapons. Given the nature and definition of those goods and services, the level of attention of the relevant consumer will be at an average to high level.
- The sign is perfectly and immediately recognisable to the relevant public as an image of a virtual firearm and does not require any mental effort from the consumer.
- The mark therefore lacks any distinctive character.
Grounds of Appeal
Colt lodged an appeal in February 2023, arguing that the application deviates significantly from the norm or customs of the virtual goods sector. Colt also asserted that the application is an assault rifle CZ BREN 2, which is characterised by its complex shape. A consumer who is at least marginally interested in weapons, will distinguish the application from other assault virtual rifles at first sight. The relevant public, according to Colt, will be supporters of firearms or firearms used in virtual settings. Moreover, Colt argued that the exceptional shape and general appearance of the application is supported by the fact that CZ BREN 2 is also registered as an EU Design and therefore it has individual character.
Board of Appeal decision
The Fourth Board of Appeal of the EUIPO ultimately dismissed Colt’s appeal and rejected the application in its entirety, based on the following considerations:
- The relevant public: On the question of the relevant consumer of the goods and services, the Board considered that the relevant public is primarily the general public. This is because of the growing popularity of virtual platforms and online experiences. The growing popularity suggests that the relevant public includes not only professionals or enthusiasts, but also a wider group of consumers. These consumers may not be virtual weapon specialists, but may still have an interest in the products and services offered.
- The verbal element: Regarding Colt’s reference to the word element ‘CZ BREN 2,’ the Board held that the element of the application is completely negligible in terms of the size of the miniature and the size of the figurative element of the firearm. A significant proportion of the relevant public will therefore not be able to identify the word elements ‘CZ BREN 2’ without significant effort. The application contains the word elements ‘MADE IN CZECH REPUBLIC,’ in a miniature size, according to the Board. The insignificant size and absence of any contrast between the font and the figurative element of the firearm means that the ordinary consumer does not record that element.
- Visual representation: The Board accepted that “it can be successfully argued that the mowing shape is to some extent stylised or that the firearm has a specific cleavage.” Despite this, it decided that these features are not so unusual “that the ordinary consumer has to make any substantial efforts of thought” to conclude that it is a firearm in a form which does not deviate in any fundamental way from the typical representation of the weapon. For example, the average consumer would regard the figurative element as a completely normal representation of a firearm with all the essential elements.
The Fourth Board of Appeal concluded that the application is a “banal representation of the object which is the essence of the goods and services claimed.” It merely informs the relevant public in the EU of the nature of the goods and services at issue in Classes 9, 35 and 41 i.e. that they are virtual goods in the form of firearms or online entertainment, sporting or cultural services aimed at virtual firearms. Ultimately, the Board was satisfied that the application does not provide the consumer public in the EU with any additional original information.
Arguably, the EUIPO Fourth Board of Appeal reached the same conclusion as it would have if the goods in question were physical goods and not virtual goods. Even though it is clear that the relevant consumer public for ‘real life’ firearms would undoubtedly be a niche pool, the Board considered that the relevant consumer for the virtual goods and services would be a much wider pool ie the general public. The key takeaway from the case for brand owners filing applications for virtual goods and services is to consider:
- How distinctive their application is before filing
- Who the relevant consumers are likely to be, and
- How those consumers would perceive the mark in question
Lastly, it is worth noting that the Board was not convinced by the argument that the product shape is registered as an EU Design and therefore has individual character. A design and a trade mark are two distinct types of industrial property rights governed by different laws. Each also has different criteria for registration. Brand owners should be aware that both forms of IP protection may be available for the same product, shape or sign.
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