Rättsfall
| Sverige
| PMÄ 14666-22
| 2/20/2024
In this case regarding a trademark application for a geometrical figure as a surface pattern, the PMCA provide guidelines in relation to distinctiveness in relation to surface trademarks, and particularly the assessment for its inherited distinctiveness. This case further elaborates on the responsibilities an applicant holds in relation to showing distinctiveness for signs, patterns or products that are not typically associated with being trademarks.
In this case regarding a trademark application for a geometrical figure as a surface pattern, the PMCA provide guidelines in relation to distinctiveness in relation to surface trademarks, and particularly the assessment for its inherited distinctiveness. This case further elaborates on the responsibilities an applicant holds in relation to showing distinctiveness for signs, patterns or products that are not typically associated with being trademarks.
A company applied for the registration of a trademark consisting of geometric figures in the form of black and white triangles that repeat themselves without any limitation. The trademark applied for corresponds with the pattern that adorns the pavement on the square of Sergels Torg in Stockholm. The trademark application included, among other things, textile products in Nice-class 24 and paper products in Nice-class 25. The application was rejected by the Patent and Trademark Office and the applicant appealed to the PMC, who also rejected the application. The case finally made its way to the PMCA for a final decision on the registrability of the surface pattern.
The PMCA assessed and confirmed that the trademark applied for consists of a surface pattern. A surface pattern can be protected as a trademark if the general requirements for registrability are fulfilled. As the application also covered a number of goods, the average consumer was to be the interpret as the general public. The court found that the way to interpret surface patterns and their distinctiveness are to be compared to the assessment made for 3D trademarks. This interpretation gave that the surface pattern needed to divert from the norm to the extent that it would be considered something unusual in its appearance in the relevant industry, which the surface pattern did not. The PMCA therefore found that the mark lacked inherent distinctiveness. Like the PMC, the PMCA further found that the company also had not shown that the mark had acquired any distinctiveness. As the trademark consists of a surface pattern and the applicant was unable to show distinctiveness, it will not be perceived in any other way than as a decoration. As the prerequisites for registration have thus been lacking, the company's appeal was rejected, and the application denied.
In addition, the applicant tried to add evidence during the appeal. However, the PMCA rejected this request for additional evidence since the applicant had not shown that they had not been able to supply the PMC with the same evidence in the first instance.
This case shows that an applicant needs to be diligent in the application procedures and that the burden of proof in relation to distinctiveness, especially for what traditionally has been called ‘non-traditional’ trademarks, lies on the applicant alone. The inherent distinctiveness for surface patterns is in general low and as the PMCA explains, need to divert from the general norm to have inherent distinctiveness. The responsibilities for the Patent and trademark office are to follow general rulings and procedures for assessing distinctiveness. They have however not the mandate nor the responsibility to assess an application further or on other grounds and evidence than the ones provided by the applicant.
It is furthermore worth noting that the PMCA has classified the case as an indicative ruling. This should be seen as an indicator that the case can be used as a ‘do not’ example for applicant once trying to obtain a trademark registration for a surface pattern or another ‘non-traditional’ trademark.
