Descriptive icons prove a setback for Sony and Douwe Egberts

AI version of a merged coffee maker and gamecontroller

There was a time in the European Union when all you had to do to register a descriptive word as a trademark was to add a minimal graphic element, but those days are long gone.

Nowadays, the more descriptive a word, the stronger the graphic element must be; using a simple font or basic shape alone is insufficient to provide the necessary distinctiveness to a descriptive word.

Figurative marks without words can also be considered descriptive, as Douwe Egberts (a well-known coffee specialist) and Sony recently discovered.

Is a figurative mark consisting of a game controller with two handles and a central section distinctive? Not according to the European Trademarks Office. The icon consists of generic elements of a game controller, but there is nothing that identifies the brand to the consumer. Even somebody familiar with game controllers would not immediately be able to identify it as belonging to Sony or tell it apart from other game controllers as the shapes are so basic.

Sony argued that consumers are familiar with the mark. The new controller for the PlayStation 5 is slightly more rounded but has the same familiar features as other designs for Sony controllers. The EUIPO did not consider it relevant that there was significant awareness among consumers as, according to Sony,  so many were familiar with this trademark. If that had been the case, Sony should have claimed that the icon had acquired a distinctive character through use and submitted evidence to that effect.

In short, a generic icon of a game controller is not distinctive. That also proved to be the case when Douwe Egberts filed an application for an icon of a coffee maker. Because the features of the coffee maker were not significantly different to a basic shape found in most coffee makers, the coffee specialist faced a refusal too.

Author: Arnaud Bos

Bio: Arnaud is trademark attorney and within Knijff responsible for the marketing & communication. Arnaud is specialist in the metaverse and music sectors and his client portfolio includes many upcoming and renowned bands. He keeps a close eye on the latest case law in the EU and will let you know when he sees remarkable applications.