By Jaume Mourisco Ayuso, Intellectual Property Lawyer | Litigation Department

It is well known that, whether for strategic reasons, extravagance, or a combination of both, companies tend to file trademark applications that are, shall we say, peculiar.

This is what happened on 5 September 2023, when Mercedes-Benz Group AG (hereinafter “Mercedes-Benz”) decided to apply to the EUIPO for the following figurative trademark:

Indeed, you are right. Mercedes-Benz applied for the well-known (and recognisable) front end of its cars, and in particular, its specific radiator design. This application, No. 018922038, was made for classes 12 (Vehicles; Radiator grills of metal for vehicles; Radiator grills of non-metallic materials for vehicles) and 28 (Toys; Games).

Although Mercedes-Benz is known for its fast vehicles, it was the EUIPO that took the lead at the first curve, as, in its decision of 3 October 2024, it partially rejected the application, specifically denying the trademark access to the registry for the products described in Class 12, citing the lack of distinctive character of the trademark applied for in relation to those goods (Art. 7(1)(b) EUTMR). More specifically, the examiner provided the following explanations:

• That, although vehicles can be assigned a kind of “face”, a radiator grille cannot serve as such, since such a grille is commonly used in vehicles and its appearance does not differ from usual designs.
• Furthermore, consumers generally pay more attention to a company’s name or logo than to its “appearance” or “shape”. In other words, in this case, the fact that the central circle is left empty would not lead consumers to associate this grille design with the Mercedes-Benz trademark.
• Finally, the examiner rejected the applicant’s argument that the grille was made up of individual stars (which are registered as Mercedes trademarks, nos. 18206091 and 18861031) and that even an attentive consumer would not notice this, seeing only another grille design.

In view of this, Mercedes followed in the footsteps of the EUIPO and lodged an appeal against the Office’s decision on the following grounds:

• Vehicles, as well as their parts, are usually expensive products, so, given such a financial outlay, consumers will pay close attention to their characteristics, including the design of the vehicle and, therefore, the shape of its grille.
• The examiner erred in stating that the trademark applied for is not distinctive for grilles in respect of the requested Class 12, because there are precedents that do recognise such distinctive character, both for grilles themselves (Case T-128/01) and for car headlights (Case T-260/23).
• That, in view of the above, as well as the market for which the type of vehicles incorporating this type of radiator grille is intended, it will be perceived as the face of the vehicle or, in the words of Mercedes-Benz, will be recognised as the trademark face of the vehicle.
• And that the star matrix of the grille itself was distinctive per se, since it is made up of Mercedes stars, which are effectively registered as EU trademarks, thus allowing consumers to perceive this trademark as a composition of the former, together with the horizontal line that divides it and the central circle where the Mercedes logo usually appears.

On these grounds, the EUIPO took a wrong turn, as the First Board of Appeal of the EUIPO, after reviewing the contested decision on the basis of the arguments put forward by Mercedes-Benz, acknowledged the error in the initial assessment issued by the EUIPO.

Although the Board of Appeal did not accept the argument that the trademark applied for was composed of two earlier Mercedes-Benz trademarks and therefore could not be examined on that basis, it did understand the error in the decision, mainly on the basis of two premises:

• That, as already ruled by the General Court of the EU, the radiator grille of vehicles should be considered and is considered an essential and distinctive feature of each vehicle and therefore serves as a means of indicating the commercial origin of the vehicle, thus fulfilling one of the essential functions of trademarks.
• Secondly, in the case at hand, it found that the figurative mark was not only made up of a star-shaped mesh structure, but that the combination of this with the central horizontal line and the circle in the middle produced an overall impression capable of enabling consumers to distinguish it from those of other vehicle manufacturers.

In other words, Mercedes-Benz overtook the EUIPO on the outside of the last curve by demonstrating that its trademark application consisting of the well-known front radiator of its cars was sufficiently distinctive to enable consumers to recognise the commercial origin behind it, thus complying with the requirement of Article 7(1)(b) of the EUTMR.

Mercedes has taken great care of these elements over the years, creating a reputation around this unique radiator grille design, to the point that consumers, as soon as they see it, are able to associate it with the renowned vehicle trademark, which is yet another example of the great power that trademarks have in the market and how important it is to care for and promote them.