EUIPO dismiss Amazon’s application for the registration of its motion mark

With a decision dated April 28, the EUIPO’s Second Board of Appeal rejected Amazon Technologies Inc.’s application for the registration of the motion logo represented below, due to its lack of distinctive character under Article 7(1)(b) of Regulation no. 1001/2017 on EU trademarks.

As shown in the image above, the trademark applied for consisted of a grey circle progressively coloured by two light blue lines, running clockwise and anticlockwise until the completion of the circle, that eventually glowed purple.

According to the EUIPO examiner, the representation of the trademark did not clearly show the colour flow claimed and, therefore, the application was to be rejected. However, following Amazon’s appeal, the Second Board of Appeal had annulled the decision of the examiner and had remitted the case to the latter to decide on the trademark’s registrability in respect of the requirements under Article 7 of UE Reg. no. 1001/2017. At this point, however, the examiner had rejected the application again, stating that the colour flow was of an unremarkable and banal nature.

Amazon then filed another appeal against the decision, claiming that its trademark was unique in the market and had a sufficient degree of distinctiveness to be registered. Moreover, according to the appellant, the EUIPO examiner had not adequately specified for which reasons the trademark was to be deemed unremarkable, nor had the lack of distinctiveness been assessed with reference to each class of products and services claimed in the application (i.e. 9, 35, 41, 42 and 45). In addition, Amazon emphasised that the EUIPO had in the past granted the registration of similar motion marks, and that, in any case, the disputed logo had already been granted in the USA and Germany.

However, with the decision discussed here, the Second Board of Appeal confirmed the lack of distinctiveness and dismissed the application for the registration on the basis of Article 7(1)(b) Reg. 1001/2017. According to well-established case-law, in fact, a sign which is excessively simple and composed of a basic geometrical figure (i.e. a circle, a line, a rectangle) is not in itself capable of conveying a message which consumers will be able to remember, with the result that they will not regard it as a trademark. In particular, according to the Board of Appeal, although the sign consisted of a colour flow and was not merely a circle, the circle itself constituted its core element; consequently, for the above reasons, the trademark was considered overall to be devoid of distinctiveness.

In assessing the lack of distinctiveness, the Board of Appeal also made specific reference to each class of registration, whose claimed products and services related, in general, to the field of electronic devices or electronic services intended for the general public. Regardless of the intrinsic banality of the sign, EUIPO then pointed out that, when the application was filed (August 2016), the visualisation of how an object evolves in time already appeared as a common feature to any consumer in the world of electronics.

In addition, according to the EUIPO, the Amazon logo was also devoid of distinctive character for a second reason: according to the case law, in fact, a sign representing the functional features of the goods or services is not perceived as an indication of the origin of those goods or services. Since the goods and services claimed related to the field of electronics in general – in which motions within a bar/a circle/other basic geometrical shapes are often used to convey the idea of the existence and duration of an electronic activity – a circle with ascending lines and colours would have been immediately perceived as a necessary indicator of an upload, an activation, or the processing of an input.

Lastly, the Board of Appeal pointed out that the registration of the disputed motion trademark in Germany and in the USA could in no way affect the outcome of its judgment, since national trademark offices’ decisions are not binding for the EUIPO. Likewise, the fact that the registration of similar motion marks had already been granted in the past by the EUIPO could not affect the present case because, on the one hand, the signs cited in Amazon’s defence were more complex (for example this ) and on the other hand, because the principle of equal treatment had to be balanced with the principle of legality, therefore Amazon was not entitled to take advantage of previous similar decisions in order to obtain an identical one in breach of Article 7 of Reg. no. 1001/2017.