EU trade mark dispute: off-road vehicle climbing a hill

On 19 March, in case T-400/24, the General Court of the European Union (GCEU) ruled on the distinctiveness of a EU trade mark of Mercedes-Benz consisting of a sketch of a vehicle climbing a steep hill.

In December 2022, the German automotive company Mercedes-Benz Group AG applied to the European Union Intellectual Property Office (EUIPO) to register the EU figurative mark no. 018805110 for goods in classes 12 and 18 of the Nice Classification, including motor vehicles and their parts, tyres and wheels, leather and imitation leather, suitcases and travel bags.

At first instance, the EUIPO examiner partially refused the application for lack of distinctiveness in respect of goods in Class 12, including motor vehicles, their parts, tyres and wheels. Thereafter, the Board of Appeal dismissed the appeal, holding that the mark represents a typical off-road vehicle climbing a hill, thus illustrating generic characteristics of the vehicle without distinctive elements. It also noted that the relevant public, which consisted of consumers in the European Union with a high level of attention, would not perceive the image as an indication of commercial origin and that it was therefore devoid of any distinctive character.

The German company appealed to the General Court, which had to decide whether the mark was indeed lacking distinctive character. In this case, the Court considered that the sign was a common representation of an off-road vehicle, which lacked sufficient distinctiveness to be registered as a trade mark. It emphasised that, in order to be registrable, a mark must differ significantly from the typical representations in the relevant sector.

Although Mercedes-Benz claimed that the design of its mark resembled a unique sketch that consumers could easily remember, the Court concluded that the simplified graphic design of the mark was not sufficient to change consumers' perception, as it remained ordinary and typical for off-road vehicles. Therefore, the General Court dismissed the German company's appeal.