EUIPO, R 275/2023-4, September 13, 2023, TVAR VIRTUÁLNÍ STŘELNÉ ZBRANĚ (fig.)
The fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) addressed an important issue for those interested in trademark protection in virtual worlds in a recent decision on September 13, 2023
The decision concerned an application for registration of a European Union trademark in classes 9, 35, and 41 filed by Colt CZ Group SE (Colt), a Czech holding company that acquired Colt’s Manufacturing Company LLC, a well-known American firearm manufacturer.
Colt filed a trademark application for a virtual firearm in February 2022 for virtual products and services related to online firearms. However, in December 2022, the EUIPO examiner rejected the application, arguing that the trademark lacked the required distinctiveness.
The reasons for the examiner’s rejection were as follows:
- Without distinctiveness, the trademark resembled a common representation of a virtual firearm, and the target audience would perceive it as such.
- The fact that some members of the public may be knowledgeable about firearms had no bearing on the assessment of distinctiveness.
As a result, the trademark lacked distinctiveness.
Colt appealed the decision, arguing that the trademark was unique and recognizable, notably thanks to the verbal element “CZ BREN 2” and the complexity of the virtual weapon’s shape represented.
The Board of Appeal began by emphasising that the distinctiveness of a trademark must be evaluated in light of the requested products and services, as well as public perception.
Concerning the relevant audience, the Board determined that it consisted primarily of the general public.
Regarding the distinctiveness of the trademark, the Board examined two particular elements: the verbal element “CZ BREN 2” and the visual representation of the virtual firearm.
Because of its size and lack of contrast with the background, the verbal element “CZ BREN 2” was deemed insignificant, making it difficult to identify for a significant proportion of the public.
The visual representation of the virtual firearm was deemed commonplace and conforming to industry standards, not deviating significantly from consumers’ expectations for virtual firearms.
In conclusion, the Board upheld the examiner’s decision that the trademark was not distinctive because it did not allow the public to identify the commercial source of the questioned products and services.
This decision emphasises the importance of distinctiveness in trademarks’ registration in the context of virtual worlds and clarifies how the target audience, as well as verbal and visual elements, are considered in this assessment.
It highlights an important point: even if a product or service in the real world is specialized or requires particular expertise (such as firearms), the targeted audience for the virtual equivalent of that product or service may be much broader and less specialized in terms of knowledge.