Date: 7 August 2018
Maucher Jenkins has recently advised Pressol, a leading manufacturer of lubrication and garage equipment technology, in a successful cancellation action at the EUIPO against a 3D trade mark (Cancellation No. 11483 C). The 3D mark in dispute was registered by the Spanish company Samoa Industrial in 2013 for goods and services all related to pumps. The mark itself represented a standard shape of a barrel pump, as shown below:
Maucher Jenkins successfully argued that the mark consisted exclusively of the shape necessary to obtain a technical result. In order to function, a pump needs a central body, telescopic tube, lever handle and nozzle. The contested mark contained all of those four components and no additional features unrelated to its pumping function. Furthermore, pumps with comparable shapes have been offered for years before Samoa applied for the mark. The mark is descriptive, devoid of distinctive character and generic. Moreover, without any brand name attached to the pump as represented by the mark, or any other distinctive feature attached to it, consumers would not be aware of the commercial origin of the mark.
In a letter sent in 2015, Samoa warned Pressol not to offer a special barrel pump which looked very similar to the barrel pump registered as a 3D trademark by Samoa. The technical features of this barrel pump were also protected by a patent, but this expired in 2003. Between 2003 and 2013, the pump was not protected by any IP, and it was evident from the claims of the patent that the shape of the pump itself was necessary to obtain the technical result. The reasoning behind Article 7(1)(e)(ii) of the EUTM Regulation was to prevent a technical solution being monopolised beyond the protection afforded by a patent. The relevant question in the present case was, therefore, whether the owner of the contested mark could block competitors from using the same technical solution.
Previously, Maucher Jenkins inter alia informed Samoa about the lack of distinctiveness and offered to end all actions if Samoa agreed to stop demanding that Pressol cease selling the barrel pump. However, as Samoa was not willing to come to an agreement, Maucher Jenkins started an invalidity action against the 3D trademark at the EUIPO based on lack of distinctiveness.
Commenting on Maucher Jenkins involvement with the case, partner Michael Nielen said: “The EUIPO followed our argumentation and now declared the 3D trademark invalid at least with respect to all goods and services referring to general pumps or hand-operated pumps (e.g. like barrel pumps). In case a shape of a product should be protected by a 3D trademark, such a trademark is non-distinctive if this trademark shows at least the common technical features of this kind of product.”
Many thanks to Gerrit Schultz for the assistance and support in this case. The decision is currently not final. The full decision can be read here.