Position Marks on Shoes (or How Stripes Never Go Out of Fashion)
Stripes designs on shoes and another pieces of clothing has long been one of the most popular patterns to try to make its way to the trademark register, despite OHIM´s inconsistency in deciding which sign reaches the threshold of minimum degree of distinctiveness and despite the General Court´s reluctance in accepting stripe position marks, unless acquired distinctiveness can be demonstrated.
One of the recent failed attempts of the industry to register stripes on the side of a shoe as trademark was the application for protection in the European Union of International Registration nº 932758 filed by K-Swiss in class 25 consisting of the following sign:
The Judgment of the General Court of 4 December 2015, T-3/15, “K-Swiss Inc. v OHIM”, confirmed an earlier OHIM´s decision stating that the above mark lacks distinctive character, pursuant to Article 7(1)(b) of the Regulation 207/2009 on the Community Trademark (CTMR).
The Court held that the sign in question consists of a simple juxtaposition of five sloping, parallel stripes, the size of which varies so as to correspond to that of the side of the shoe and as such is banal and “unlikely to acquire distinctive character simply because it is placed on the side of the shoe”.
With regard to the special position of the mark on the shoe, the Court noted that it is common practice for manufacturers of sports shoes or casual shoes to use simple patterns on the side of the shoe and that the placing of the sign at issue on this particular element of the product is not likely to attract the attention of the relevant public. Consequently, the sign at issue, as placed on the side of the shoe, cannot be, in the opinion of the Court, “immediately apprehended as constituting an indication of the commercial origin of the goods concerned”.
Furthermore, the Court ruled that there is no sufficient information and evidence that would make it possible to determine that “the average consumer has learned to establish an automatic link between the sign featuring on the side of a sports shoe and a particular manufacturer and that that consumer will therefore necessarily perceive any geometric shape placed on the side of a sports shoe as being a trademark”.
The above conclusion was drawn despite K-Swiss´s argument that sellers display in shops the side of the shoes on which the marks appears and despite the common knowledge that Adidas has, as a matter of fact, succeeded in educating consumers to pay special attention to the patterns placed on the side of the shoe and to recognize them as signs of a particular commercial undertaking.
But, what if a sign of similar characteristics is placed on another, more surprising, part of the shoe? Would that be a solution to the problem?
It was not for KEDS LLC who our firm represented before the OHIM during the prosecution of its Community trademark nº 011196003 depicted below:
The two stripes sign was refused registration by the Board of Appeal in its decision of January 20, 2014 (Case R 798/2013-2) despite the fact that it was affixed to the sole of the shoe (foxing-like band), which was anything but common according to the extensive evidence submitted by the applicant showing that no one else on the market identifies its products by stripes design placed on the front part of the sole of the shoe.
In another decision, a band of four diamond-shaped stripes, placed just above the sole, as shown in the image below, was not considered by the Office a “sufficiently outstanding feature for it to be perceived and remembered as an indication of commercial origin” and, as a consequence, the CTM application nº 008578114 filed by K-Swiss was rejected:
The insistence of K-Swiss in applying for diverse position marks for shoes might have been however encouraged by the decision of the Board of Appeal of 3 June 2003 (Case R 813/2002-1) who admitted that the sign consisting of a combination of two parallel dark stripes of the length of about a quarter of the front of the shoe and the absence of any other element or any other stripes on the rest of the shoe, makes it possible for the consumer to perceive the trademark as an indication of origin and to be guided by that trademark when making a further purchase of shoes. Consequently, the trademark was found to have at least the minimum of distinctive character necessary for registration pursuant to Article 7(1)(b) CTMR.
An apparently softer approach was also adopted by the OHIM in the examination of the following CTM nº 014258883 which was accepted just past November of 2015:
The description provided for by the owner of the above trademark reads: “A position mark consisting of a novelty visual representation situated on the sides of the shoe. The shape of the shoe shown by dashes is not part of the trademark, and is only displayed for location purposes” and we hope it was not because of the words “parallel stripes” have been replaced by “novelty” that the mark was allowed for registration.
The above examples show a worrying lack of consistency in the decision-making practice of the OHIM and that it is quite hard for the CTM users to discern whether it is the special design of the stripes or its special position on the shoe that make a particular sign more or less registrable.
The General Court seems to opt for the former when saying, in the commented decision, that “to accept that every geometric shape, even the most simple, has distinctive character because it features on the side of a sports shoe would make it possible for some manufacturers to appropriate simple, and above all decorative, shapes, which must remain accessible to everyone, with the exception of those situations in which the distinctive character of the sign has been acquired by use”.
What is clear is that there seems to be an extremely fine line between what is considered a “banal decorative element” and a sign that reaches the required minimum degree of distinctiveness.
In case of doubt, it will be the degree of intensity of use of a particular sign on the market the factor that will eventually decide on its admissibility to the register, according to the following conclusion of the Court, which offers rather little consolation to those brand owners who wish to acquire exclusive and priority rights as soon as possible, benefiting from the first-come, first-served principle for registration:
“Furthermore, it is possible that, even if some simple geometrical shapes placed on the side of the shoe make it possible for the average consumer to establish a link between the product on which those shapes are placed and a specific manufacturer, the distinctive value of those signs may be explained less by their positioning on the product than by the intensive use which has in fact been made of them on the market”.
So, what strategy should the brand owners adopt if they wish to acquire exclusive rights over geometrical shapes placed on their products but prefer to avoid a lengthy and costly prosecution that might as well end up with the application being rejected?
Here are some suggestions:
- Forget parallel stripes or stripes altogether
- Consider the possibility of registering the sign as national trademark in the Member States of the EU, instead of or in addition to the CTM application, in the hope for a less demanding approach with respect to the distinctiveness threshold
- Consider the possibility of registering the sign as industrial design, especially in cases of urgency, taking into account that at the EU level, there is no novelty or individual character examination of the application or opposition period prior to the registration. Once the design has been granted, a trademark registration can be pursued, with the possibility of a previous recollection of evidence indicating that the sign has acquired distinctiveness due to its intensive use on the market.
Related Posts:
- Jugdement of the General Court on “3D eXam”: the extension of protection of international trademarks
- Jugdement of Audiencia Provincial de Alicante of 12 January 2012, “Omega”
- Four Recent Judgments of the Spanish Supreme Court in the Field of Trademarks (I): “Cointreau”
- Analysis of the Spanish Supreme Court’s Judgment of 2 September 2015, “Gullon” (II): Application of the European Case Law on the Genuine Use of Trade Marks