EUIPO Recognises Haribo’s Gummy Bear Distinctiveness - ICT Limits Apple’s Imports Due to Patent Infringement

EUIPO Recognizes Gummy Bear Figurative Mark Distinctiveness

On 11 October, the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO), in case R 872/2023-4, recognised the distinctiveness of a figurative mark representing a gummy bear. This decision could have a significant impact on the protection of 2D and 3D marks in the European Union.

2 years ago, in October 2021, HARIBO’s IP holding company, Rigo Trading S.A, filed an application for an international registration under the Madrid Protocol for a figurative mark representing a gummy bear, on the basis of its earlier Benelux trade mark. The application covered a wide range of goods and services in several classes of the Nice Classification, including for example magnets in class 9, jewellery in class 14, cases in class 18, mirrors in class 20, containers in class 21, clothing accessories and hair ornaments in class 26 and inflatable floats in class 28.

However, in June 2022, EUIPO provisionally refused the application partially, arguing that the mark was not to be registered on the basis of Article 7(1)(b) of the EUTMR because it lacked distinctiveness for a large part of the goods claimed: indeed the examiner stated that the appearance of the gummy bear did not depart significantly from what was already being used by others to decorate their own products (stylised versions of bears applied to these products). As the examiner considered that the sign in question would not be perceived as unusual by the customers for certain products, and it could therefore not be considered distinctive enough to warrant trade mark protection. For instance, the evaluator considered that products such as clothing, footwear and even games and toys lacked distinctiveness. However, he did approve distinctiveness for belts, playground and video games equipment.

Rigo appealed the decision, claiming that the mark did have distinctive elements which distinguished it from competing gummy bear products. Moreover, it cited as example, among others, the well-known Lacoste’s crocodile and Batman’s emblem as registered figurative marks which use animals or geometric shapes as indicators of origin.

The Board of Appeal first emphasised that "distinctiveness" in the context of Article 7(1)(b) of the EUTMR means that the mark applied for "must serve to identify the goods or services for which registration is sought as originating from a particular undertaking and thus to distinguish those goods or services from those of other undertakings". Said 'distinctiveness' had to be assessed, firstly, in relation to the goods and services applied for and, secondly, in relation to the perception of the relevant public. In this case, since the mark is a figurative sign without any word elements, the perception of the public throughout the European Union had to be taken into account.

The Board concluded that the mark had at least the minimum degree of distinctiveness required for protection as an EU trade mark, since it was not similar to the shape most likely to be adopted by the goods in question, and it was not common for a gummy bear to be represented on goods unrelated to confectionery. It was therefore sufficiently distinctive to act as a sign of origin of the goods in question, as it would enable the public to identify the goods bearing this sign as originating from the applicant.

This ruling emphasises that a minimum degree of distinctiveness is required for the protection of figurative trade marks, without any requirement of originality or artistic merit. Application for such trade marks should not be rejected as lacking distinctiveness just because similar signs have been used decoratively on unrelated products in the past.

ITC Issues Exclusion Order Against Apple Over Patent Infringement

On Thursday, October 26, the U.S. International Trade Commission (ITC) a U.S. federal agency in charge of investigating and ruling on matters relating to international trade, including the resolution of trade disputes and the protection of intellectual property, issued a limited exclusion order and a cease and desist order against Apple, which could affect Apple’s ability to import its own smart watches (which are manufactured in China) into the U.S. The ITC found that Apple had infringed two patents owned by Masimo Corporation related to the measurement of blood oxygen.

This dispute stems from a lawsuit filed by Masimo in June 2021. Masimo alleged that after meeting with Apple in 2013 to incorporate technology into the Apple Watch, Apple began hiring Masimo employees, and by launching the Series 6 Apple Watch in 2020, it was infringing on Massimo’s patent. According to Masimo, the sale and importation of these watches infringed on its patents and used the company's trade secrets.

The ITC determined that Apple effectively infringed Masimo's patents by importing the specific Apple Watch models in question. Nevertheless, it's important to note that this order does not affect Apple Watch units that have already been imported, nor does it prohibit their sale in the U.S.

After this decision, Apple has 60 days to appeal it to the U.S. Court of Appeals for the Federal Circuit. If Apple chooses not to appeal, it will have to explore alternatives such as modifying its watches, licensing the disputed patents, or seeking other solutions to continue importing the affected models.

Apple has stated that Masimo was trying to use the ITC to block a product that could save lives for American consumers while promoting its own watch as a competitor. Although Apple has stated that the current decision will not immediately affect sales of the Apple Watch, it plans to appeal the exclusion order.

It is worth noting that Apple has faced similar challenges in the past. In February, the ITC issued a ban after finding that Apple had infringed patents owned by AliveCor, although the ban is currently on hold due to an appeal. When considering the impact on the European Union (EU), it is important to know that the ITC's decision doesn't directly affect the EU. However, the outcome of this legal battle might still have a ripple effect, so it remains to be seen what are the long-term effect of the ITC’s decision.