Frederiksdal, the largest winery in Denmark is known for its wines made from a special Danish cherry. On the estate there is a remarkable building built in 1756. This building is used on the logo of the wine.
To get maximum trademark protection the wine maker choose to register the image independently of the word element. This application was however refused by the EUIPO. Refusals of device marks and combined marks occur more often lately, but not always correctly, as we also will see in this case.
The examiner based the decision of the refusal on article 7 (1) (b) EUTMR: the picture is devoid of any distinctive character. As a reasoning, the examiner stated that the mark was a simple and basic representation of a building and was therefore not sufficiently distinctive. It is common to use representations of buildings on a wine from where the wine is produced. Moreover, also for the other claimed goods the image was devoid of distinctive character as the picture is purely ornamental. Finally, the examiner states that the picture would be perceived as an indication of the building where the products are made.
After a further rejection, the applicant went in appeal. The Board of Appeal finds that there is no reason whatsoever to refuse this device mark. First of all, the Board criticized the incorrect use of articles and wording. Moreover, it could not follow the arguments of the examiner, they are quite contradictory: a picture can be perceived as the place where the products are made or can be perceived as a banal indication. A picture cannot be both of those.
Furthermore, as evidence of the ornamental argument, examples where shown of other wines labels showing a castle and the name of a wine. As in this respect the building was filed without any word element, these examples are irrelevant. In his assessment, an examiner cannot suppose that such a picture will be used together with a word.
Finally, whether the use of castles and buildings is common on labels is not the yardsstick for the assessment of article 7 (1) (b) EUTMR but for article 7 (1) (c) EUTMR (whether or not the trademark is descriptive). The Board concludes that “in the end of the day the examiner created a new sub-category of non-dinstinctive makrs, “buildings on labels”, for which is no end.”
So, as there is a trend that device marks or marks with device elements are severely examined (and refused), in some cases it is worthwhile to bring the matter up to the Boards of Appeal.
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