Maison Margiela’s numeric trademark rejected by EUIPO

The EUIPO First Board of Appeal has held that the digital mark applied for by the prestigious French luxury fashion house does not meet the distinctiveness requirement of Article 7(1)(b) of Regulation 2017/1001 (EUTMR).

On 30 September 2021, Maison Margiela applied to register as an EUTM a figurative mark consisting of a sequence of numbers from 0 to 23 for Classes 4 (candles), 11 (lighting apparatus), 21 (household utensils and containers) and 35 (retail and wholesale services in connection with bleaching preparations, perfumes, etc.). On 19 August 2022, the examiner refused registration of the mark applied for, on grounds of Article 7(1)(b) of EUTMR.

On 7 October 2022, the French luxury house lodged an appeal against the contested decision based on the following grounds:

On the one hand, Margiela argues that, according to case law, signs composed exclusively of numbers without graphic modifications can be registered as trade marks. On the other hand, it defends that the public will perceive its figurative mark as a sequence of numbers placed on three separate lines one above the other, and not as a mere enumeration of numbers. Moreover, Margiela adds that the fact that relevant consumers are not accustomed to seeing a long sequence of numbers favours the distinctiveness of the mark.

In a decision issued in May this year, the Board of Appeal explains that the distinctive character of a trade mark must be assessed in two respects: first, by reference to the goods or services in respect of which registration has been applied for and, second, by reference to the relevant public’s perception of the mark.

The Board went on to state that the fact that the figurative mark is presented as a sequence of numbers from 0 to 23 separated into three lines, when applied to the goods and services for which protection is sought, is likely to be perceived by the relevant public as a non-distinctive sequence of numbers. The pertinent public is accustomed to seeing long series of numbers reprinted on product labels or on their packaging that correspond, for example, to some internal code.

The Board of Appeal points out that there must be certain aspects of the signs in question that can be easily and instantaneously memorised by the relevant public and which allow those signs to be perceived immediately as indications of a commercial origin. The Board considers that the sign at issue is likely to go unnoticed by most consumers and it will not be perceived as a sign denoting a connection with a specific undertaking.

Furthermore, the fact that the relevant public is not used to see long sequences of numbers as a badge of commercial origin cannot be an argument in favour of distinctiveness.

Consequently, the sign applied for is found devoid of distinctive character and its registration is for that reason impermissible on the grounds for absolute refusal laid down in Article 7(1)(b) of the EUTMR.

While the EUIPO does not consider a numeric pattern sufficiently distinctive to be an EU trademark, it decided in favour of the French luxury house by allowing the registration of the trade mark consistingof the same numerical code, but with the crucial inclusion of the words “Maison Margiela” underneath.