Decision of the Board of Appeal: Super Simon found distinctive

In case R 1490/2022-5

On 7 May 2019, the Dutch company Chiever B.V. filed an application with the EUIPO to register as a multimedia trade mark a 22-second video consisting of an animation of Super Simon, flying from his workplace to a holiday resort offering leisure and entertainment.

The goods and services in respect of which registration was sought are in Classes 16, 33 and 41.

In February 2020, the examiner informed the applicant that the mark was devoid of any distinctive character as it would be perceived by consumers as a short animation or promotional film rather than as a sign indicating the origin of goods and services. After some back and forth, the examiner finally issued a refusal decision in June 2022. Chiever B.V. filed an appeal requesting the annulment of the decision.

After analysing the case, in a decision from March 2023, the Board of Appeal considered that the mark had the minimum degree of distinctiveness to allow its registration to proceed.  It argued that the fact that the video is complex does not necessarily prevent the public from perceiving it as a trade mark. In particular, the decision states that "the main character of the video, Super Simon, is distinctive and the relevant public will remember that he escapes to a holiday destination".

The BoA went on to recall that multimedia marks cannot be equated with television advertising. In this respect, the first-instance examiner had considered that it is common in television advertising to indicate the commercial origin at the end of the TV spot, which was not the case here. On the other hand, the Board of Appeal held that 'it is not necessary for the mark to provide precise information as to the identity of the manufacturer of the goods or provider of the service', it being sufficient for the mark to enable the relevant public to distinguish the goods or services covered by the mark from those of another commercial origin. Furthermore, although the examiner had found that the mark was not distinctive because it had no connection with the goods and services in question, the Board of Appeal pointed out that the lack of connection between the goods and services cannot justify the lack of distinctiveness.

Consequently, the Board overturned the examiner’s decision and the mark was considered as distinctive. Thus its registration procedure could resume.