Burberry failed to register its famous pattern as an EU trademark for digital goods
Theoretically, patterns can be registered as trademarks which is really important for some industries such as fashion. However, not every pattern meets the trademark law requirement for distinctive character and this can be a huge challenge for every applicant.
Is this the same for the so-called digital goods and services that have become popular in recent years?
Absolutely yes, what’s more, it could be even more challenging because the Patent Offices’ practice is still not so developed for these new digital goods.
One case in that regard is an attempt by Burberry Limited to register as an EU trademark its famous pattern for different digital goods and services in classes 9, 35, and 41:
Theoretically, patterns can be registered as trademarks which is really important for some industries such as fashion. However, not every pattern meets the trademark law requirement for distinctive character and this can be a huge challenge for every applicant.
Is this the same for the so-called digital goods and services that have become popular in recent years?
Absolutely yes, what’s more, it could be even more challenging because the Patent Offices’ practice is still not so developed for these new digital goods.
One case in that regard is an attempt by Burberry Limited to register as an EU trademark its famous pattern for different digital goods and services in classes 9, 35, and 41:
The mark was allowed only for the following:
- Class 9 Downloadable interactive characters, avatars and skins; Video games and downloadable video game software.
- Class 41 Providing online information about digital games; Providing online video games; Provision of online information in the field of computer games entertainment; Entertainment services, namely, providing online electronic games, providing a website with non-downloadable computer games and video games.
This decision was upheld by the Board of Appeal. Interestingly, the applicant already owns the same pattern as an EU trademark but for physical goods. That shows some inconsistency in the practice regarding distinctiveness in the case of digital and physical goods but on the other hand, shows the necessity of proving secondary distinctive character for the digital world too.
