3D shape mark held to be indistinctive

An application to register the three-dimensional (3D) shape mark shown below for medical devices in Class 10 has been refused for being devoid of distinctive character.

The mark was described as the 3D shape of an intravascular device consisting of a floral pattern visible on top of the intravascular device which is created by an intersecting wire configuration. According to the principles of distinctiveness, in order to be distinctive enough for registration, a mark must offer a guarantee that the medical devices bearing the mark or the shape of the mark come from one specific undertaking. 

The registrar considered:

• The principles relating to distinctiveness set out in Henkel KGaA v Office for Harmonisation in the Internal Market ([2004] ECR I-5089), Nestle SA’s Trademark Application (Have a Break) ([2004] FSR 2) and Linde AG v Deutsches Patent-und-Markenamt ([2003] RPC 45).
• The principles for assessing the distinctive character of a 3D mark set out in Mag Instrument Inc v Office for Harmonisation in the Internal Market ([2005] ETMR 46) and Yakult Honsha KK’s Trademark Application ([2001] RPC 39).

The registrar rejected the applicant’s argument that the intersecting wires in the mark formed a distinctive floral pattern and that the design and configuration of the mark was an eye-catching or unusual shape intended to indicate trade origin. Applying Yakult Honsha KK’s Trademark Application, even if the mark contained a configuration of intersecting wires forming a floral pattern, it did not mean that it would be taken by the public as an indication of trade origin.

The registrar held that the mark would not be regarded by relevant consumers (ie, medical professionals and members of the general public) as an indicator of trade origin of the medical devices for the following reasons:

• The medical devices applied for were highly specialised goods and their particular uses or types were not specified. There would be potentially serious consequences if a sub-standard or unsuitable medical device were used, and therefore the relevant consumers were expected to exercise additional caution and a higher level of attentiveness in choosing medical devices. Moreover, the relevant consumers are not in the habit of recognising trade origin by a 3D shape attached to a product or the shape of the actual product. 
• Consumers do not usually make assumptions about the origin of goods based on the shape of the product and, as their perception of a shape mark is not the same as a word or figurative mark consisting of a sign independent from the appearance of the goods it denotes, the distinctive character of a 3D shape mark is therefore more difficult to establish than a word or figurative mark.
• Intravascular devices come in different shapes with different patterns on top of the devices, and the particular floral pattern of the device did not depart significantly from the norm in the sector. As on first impression consumers were likely to perceive the mark in relation to intravascular devices as a fairly ordinary intravascular device, the mark failed to fulfil the essential function of indicating trade origin.
• When the mark was used in relation to medical devices other than intravascular devices, it conveyed an “origin-neutral” message and it would simply be viewed by relevant consumers as an embellishment or a decorative ornament attached to a medical device. 

Without first being educated that the mark was intended to be used as a trademark, the relevant consumers were unlikely to perceive the mark as an identifier of the trade origin of medical devices.