10/10/2024
In 2015 Volvo debuted the Thor’s Hammer headlights on their XC90 vehicle, featuring a Y-like design with the narrow end pointing towards the grill. These headlights were well received and have since been featured in Volvo’s marketing as an identifiable element of Volvo vehicles.
Given the success of the design, Volvo have sought to acquire IP protection for the headlights, which would allow Volvo to not only to challenge counterfeit models and unauthorised resellers but also dissuade their competitors from adopting similar elements in their cars. However, Volvo’s attempts to secure trade mark protection for these designs have met consistent challenges from the EUIPO.
We report on a recent bit of positive news for them, with the decision of the EUIPO General Court affirming that Volvo’s shape mark applications for the Thor’s Hammer headlights are eligible for trade mark protection.
‘Thor’s Hammer’ Headlights XC90
‘Thor’s Hammer’ Headlights EX90
Volvo’s initial efforts to protect their headlights
In 2017, Volvo filed a trade mark application for a figurative mark to protect the design of the headlights (see 2017 Figurative Mark below). This application, covering lights for vehicles in Class 11 and parts for vehicles in Class 12, was accepted without objection by the EUIPO. The application was also base of an international registration, with the designated applications in Switzerland, Norway, and Australia similarly accepted without issue. Later, the EUIPO would describe this mark as not perceived as part of a car lamp to justify its swift registration.
By 2022, Volvo’s ‘Thor’s Hammer’ headlights had been on the market for seven years and had received widespread acclaim from the automotive industry. Volvo also publicly launched its first electric vehicle, the EX90, in November 2022, which featured updated Thor’s Hammer headlights. Therefore, Volvo started to expand their trade mark protection for the design of the traditional and redesigned headlights.
Volvo’s further figurative marks – refused by EUIPO
In May 2022, Volvo filed two figurative trade marks for the headlights, featuring white shapes with slight modifications to the design of the 2017 Figurative Mark on a white background (see 2022 Figurative Mark #1 & #2). Later that year, Volvo filed a figurative application for the EX90 headlights, this mark is more representative of the design as it is used on the market and features the LED light elements.
The EUIPO refused all three applications on the grounds that the respective mark lacked distinctive character for vehicle lamps and vehicle parts. The EUIPO found that, by the filing date, the developments in LED technology had allowed automotive manufacturers to design headlights which are significantly different from traditional headlamps and that Volvo’s designers had not used the reduced technical limitations to sufficiently differentiate their models from the norms of the LED headlight market. Moreover, the EUIPO found that, while it is possible for grilles, headlights, or headlamps to act as an indication of commercial origin, the average driver would devote the majority of their attention to navigating traffic and would see the applied for marks as purely ornamental details in the overall expression of the car.
2017 Figurative Mark
2022 Figurative Mark #1
2022 Figurative Mark #2
EX90 Figurative Mark
Volvo’s Motion Marks – aesthetically pleasing but not distinctive
In addition to filing those further figurative marks, Volvo also attempted to register some non-traditional marks, including motion marks, position marks, and shape marks. This was not Volvo’s first experiment with non-traditional marks, having unsuccessfully attempted to register a collection of sound marks in 2020.
For the Motion Mark (see EX90 Motion Mark), Volvo filed an animated sequence of a headlight being lit, opening to reveal the full-beam headlight, and then closing to return to the ‘Thor’s Hammer’ design. The EUIPO rejected this application, holding that, while the movement pattern of headlights could be protected by trade marks and Volvo’s design may be aesthetically pleasing, this would not in itself allow the Motion Mark to act as an indicator of origin. The EUIPO found that Audi and Opel vehicles used similar movement pattern for their lighting and thus the Motion Mark was not sufficiently distinctive within the automotive industry. Volvo went on to appeal this decision, but ultimately decided to not to substantiate their grounds of appeal and thus the application was rejected without examination of the appeal.
EX90 Motion Mark
Volvo’s Position and Shape Marks – not perceived as trade marks according to the Board of Appeal
Volvo also filed two further applications: for a position and shape mark, namely the traditional Thor’s Hammer headlight design on a disclaimed car and photographs of the traditional Thor’s Hammer headlights, respectively. Each of these applications was be rejected, with the EUIPO providing arguments similar to those presented against the motion and figurative marks. Volvo appealed these decisions and, substantiating this appeal, provided the witness statement of an automotive design expert arguing for the distinctiveness of the Thor’s Hammer design.
In early 2023, the Board of Appeal upheld the Office’s initial rejections, maintaining that a significant part of the relevant consumers will consider vehicle headlights to be primarily functional rather than indicators of origin. The Board of Appeal also dismissed Volvo’s evidence regarding the extensive efforts of designers beyond functional considerations, finding that the relevant consumer would not be aware of this work and thus it could no affect their perception of the headlights.
Position Mark
Shape Mark
Volvo’s appeal to the General Court
Although, Volvo withdrew the Position Mark, they filed a further appeal against the decision on the Shape Mark, this time to the General Court.
In June 2024, the General Court published their decision recognising that Shape Mark as having the minimum distinctive character required to function as a trade mark. Overturning the Board of Appeal’s judgement, the General Court agreed with the expert’s witness statement and found that the design of the headlights is important for emphasising commercial origin and the ability for these headlights to be perceived at a longer distance, at both day and night, means that they are particularly effective at holding distinctive character. The General Court also accepted that the headlights in question differ significantly from other commonly found headlights on the market, describing in detail the specific variations between the Shape Mark and the other LED headlights presented by the EUIPO as, in their view, similar.
What’s next for Volvo after their General Court’s success?
Where does the General Court’s decision leave Volvo’s 2022 Figurative Mark #1 and #2? The rejections of these applications are still under appeal and pending before the Board, as we write. It is unclear the degree to which the GC’s comments with respect to the Shape Mark can be applied to the figurative marks. While the GC recognised the ability for headlights to act as indications of origin, the figurative marks, looking at the image filed, are not immediately seen as headlights? The EUIPO’s “what you see is what you get” take on representations filed has to be read in conjunction with the specification of goods filed and this application does not limit itself to headlights. Thus a comparison to the norms of the market may provide different results. For example, 2022 Figurative Mark #1 does not feature an intersecting line, and thus is further from the design of the Shape Mark which the GC found to be distinctive.
Volvo also applied to register all of the marks above at the Swedish national trade mark office (PRV), where every application was accepted and registered without objection. Therefore, if the Shape Mark is insufficient to challenge unauthorised retailers or objection to application to register similar headlights, the national registrations may fill the gap. Of course, while these national registrations can be relied upon in Sweden, they would not be available for actions in other EU member states (e.g. France).
More broadly, other vehicle manufacturers may take the GC’s confirmation that headlights can act as indications of origin to seek registration for the appearance of their own lighting. In the meantime, we will continue to monitor the more unusual filings in the automotive space.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.