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By Michael Coyle, Solicitor and Owner of Lawdit Solicitors / TheTrademarkroom.com
In the world of branding, sometimes it’s not just your name that counts—it’s your face. For Mercedes-Benz, that face includes a mesh-patterned grille with a striking circular centrepiece. Recently, that very grille became the subject of an EUIPO Board of Appeal case (R 2316/2024-1), raising a core question at the intersection of design and trade mark law: can a car’s front grille—often purely functional—acquire distinctiveness as a badge of origin?
In this article, we delve into the details of the decision, explore its implications for brands and designers, and discuss what it means for your own IP strategy.
The Battle Begins: The Trade Mark Application
Mercedes-Benz filed an application in September 2023 to register a figurative mark—essentially the visual representation of its unique front grille—under EU trade mark number 18 922 038. The mark was submitted for protection under two classes:
- Class 12: Vehicles; radiator grilles of metal or non-metal for vehicles.
- Class 28: Games and toys.
The image filed (see above) depicts a stylised radiator grille design, shaped with a diamond-mesh pattern and a central circular element—reminiscent of where the Mercedes-Benz logo might sit.
But the EUIPO examiner had objections.
The Rejection: Too Functional, Too Familiar
On 3 October 2024, the EUIPO refused the application in part—specifically for the radiator grilles in Class 12. The examiner reasoned that the mark lacked distinctive character under Article 7(1)(b) EUTMR, which bars registration for signs that are merely descriptive or devoid of any trade mark function.
Key findings included:
- The mark showed a true-to-life representation of the product (i.e., a radiator grille).
- Such design elements were seen as customary in the industry and didn’t diverge significantly from other grille designs.
- Consumers would not see this grille as a badge of origin, especially as it lacked any standalone logo or textual brand indicator.
In short, the EUIPO felt that the mark was too much “product” and not enough “trade mark.”
The Fightback: Mercedes-Benz Appeals
Mercedes-Benz appealed the decision, arguing that:
- Consumers of car parts are highly attentive, especially in the luxury vehicle segment.
- Radiator grilles serve a distinctive function, not merely technical. Consumers recognise them as part of a car’s visual identity.
- The design submitted was not generic but featured a striking “diamond star” matrix, unique to Mercedes models.
- The combination of the mesh pattern and the central circular area was not common in the industry, and should thus qualify as distinctive.
They cited earlier case law—most notably the “Calandre” case (T-128/01), which accepted a radiator grille as having minimum distinctiveness, and the “Forme de phares d’automobile” case (T-260/23) on distinctive headlamp shapes.
The Board of Appeal’s Decision: A Win for Design Marks
On 7 April 2025, the EUIPO Board of Appeal reversed the partial refusal.
Here’s why this matters.
The Board found that the grille design—despite being a product shape—had enough distinctive character to be recognised as a trade mark. In doing so, they reiterated key principles of EU trade mark law:
- Even product shapes can act as trade marks if they depart from sector norms.
- No artistic genius is required—just a minimum threshold of distinctiveness is enough.
- The relevant public (in this case, vehicle professionals and consumers) is capable of associating unique design elements with commercial origin.
Crucially, the Board noted that the mark was not just a standard mesh grille. It included a central roundel, flanked by tapering bars and surrounded by a recognisably stylised matrix, creating a visual impression capable of distinguishing Mercedes products from those of competitors.
Why This Case Matters: Distinctiveness in Design
The key takeaway is simple but powerful: a product’s shape or design can function as a trade mark—if it is distinctive enough.
This is critical for luxury brands, tech innovators, and any business investing in industrial design. The front grille of a car, the outline of a bottle, the shape of a speaker—these all play a vital role in consumer perception and brand association.
But beware. As this case shows, you must:
- Prove that your design is not generic or purely decorative.
- Argue that it deviates from the norm in your industry.
- Be ready to cite market practice, prior decisions, and consumer behaviour to show inherent or acquired distinctiveness.
Strategic Considerations for Brand Owners
If you’re a brand owner—whether in automotive, fashion, or consumer goods—what should you learn from Mercedes-Benz’s persistence?
1. Don’t Give Up at the First Rejection
EUIPO refusals are not the end of the road. Mercedes-Benz appealed and succeeded. The Board often adopts a more nuanced approach than the examiners.
2. Embrace the Power of Figurative Marks
You don’t always need text. Figurative or shape marks can offer powerful, visual brand protection. But they must rise above the merely decorative.
3. Use Your Product Design as a Brand Asset
If your product has a design feature that consumers instantly associate with you—register it. From the shape of a grille to the layout of a store interior (think Apple), EU law recognises such assets when they are distinctive.
4. Prepare Your Evidence
Distinctiveness can be inherent or acquired. If you’ve marketed a unique design for years, get your marketing materials, sales data, and consumer surveys ready. These can help prove acquired distinctiveness under Article 7(3) EUTMR if needed.
Design Protection vs Trade Mark Protection
Remember, this Mercedes grille design could also be protected by design rights, which focus on appearance rather than origin.
So why bother with a trade mark?
Because trade marks can last indefinitely, unlike registered designs which expire after 25 years max. And trade mark infringement claims tend to be stronger and broader, especially in marketing and counterfeiting disputes.
By securing trade mark status for a grille design, Mercedes-Benz gains a powerful monopoly: it can stop others using similar-looking grilles even if they differ mechanically.
Conclusion: The Grill(e) is On
This case serves as a masterclass in the strategic use of trade mark law. By fighting to protect its radiator grille as a distinctive brand asset, Mercedes-Benz has shown how design and law intersect to safeguard brand identity.
At The Trademarkroom, we work with clients every day to ensure their visual identity—whether a logo, product design, or brand slogan—is properly protected. Whether you’re a startup designing your first product, or a global business with iconic assets, the message is clear:
Your design matters. Protect it like your name.
Michael@trademarkroom.com
