http://ipkitten.blogspot.com/2023/11/can-geometric-signs-on-footwear-be.html
By decision
of 9 October 2023, the Board of Appeal (BoA) of EUIPO annulled the initial
refusal to register a position trade mark for footwear. After noting that consumers are accustomed to
the presence of geometric signs in the footwear sector, the Board of Appeal
ruled that the contested sign is sufficiently striking and memorable to be
distinctive.
Background
On 12 April 2022 Paredes
Holding Center SL (the Applicant) filed an application for the EU registration
of the position trade mark no.
18686228 in classes 9 (safety and protection footwear at work) and 25 (footwear
including boots, shoes and sneakers):
By decision of 25
April 2023 (the decision
is available in Spanish), the EUIPO examiner refused the application due to
lack of distinctiveness pursuant to art.
7 (1)(b) of the EUTMR. In short, the examiner found that:
a) the assessment of how a position trade
mark can be perceived by the public as an indication of the origin of the
product implies the examination of the overall impression produced by the
appearance of that sign;
b) admitting that every geometric
shape, even the simplest, has a distinctive character because it is located on
the side of a sports shoe, would allow some manufacturers to get a monopoly over
simple decorative shapes, which must continue to be accessible to everyone, except
for those situations in which the distinctive character of the sign has been
acquired through use;
c) the European Court of Justice (ECJ) has
established that, although it is common practice to place decorative elements
on footwear and for many variations of geometric shapes to appear on the side
of the footwear, consumers do not consider these elements as an indication of
the origin of the products, unless they have retained them in their memory due
to their wide and intensive use;
d) the ECJ has also addressed that it is
common to apply decorative elements to shoes. Thus, in the case at issue, the side
of a shoe cannot be considered a “special position”, as it is one of the places
where decorations can most easily be applied because there are fewer space
restrictions;
see the applied for position mark simply as a banal/ordinary decorative element
and will not perceive it as a badge of the commercial origin of the product.
The Applicant appealed.
The decision of the
Board of Appeal
The BoA overturned
this refusal and found the contested position trade mark to be distinctive.
i) Relevant public
Footwear products in
class 25 are common consumer goods and the level of consumer attention is
medium (T-817/16,
T-568/15),
while safety and protection footwear in class 9 are mainly directed to professional
public, whose level of attention is higher (R
2292/2020).
ii) Characteristic
and distinctiveness of position trade marks
Position marks’
purpose is to place figurative or three-dimensional elements on the surface of
the product. The decisive factor in determining whether the sign has
distinctive character is the fact that the sign is not distinguishable from the
appearance of the product (C-26/17).
According to the case law, a sign applied to the surface of a product is
distinctive if it can be perceived as an independent distinctive element (T-85/13).
iii) The trade mark
at issue
Contrary to the
decision by the Examiner, the BoA found that the trade mark applied for is the
representation that combines a series of geometric elements formed and joined
by a line of constant thickness. These elements consist of a compass-shaped
shape (chevron) facing to the right, combined with a straight line, the length
in the horizontal plane of the latter element being considerable with respect
to the first. This combination of geometric elements gives the sign a
sufficient degree of complexity that allows it to be distanced from what could be
described as a mere basic geometric figure.
The sign can be
therefore considered sufficiently memorable for the purposes of performing its
function as an indicator of commercial origin and there is no reason to think
that it is a functional piece of sewing, or that it is woven into the shoe as
part of its necessary construction. The sign can be considered independent from
the product.
iv) Common use of
position trade marks in the foot wear sector
From the evidence
filed by the Applicant, it emerges that is common for footwear manufacturers to
show the same sign on their products (lines, stripes, geometric shapes or a combination
of these) always in the same place on the outside of the product, making it visible
from distance. The average consumer of this type of product is accustomed to
this type of position trade marks and, in principle, can be guided by them when
purchasing the product (R
938/2000, R
813/2002-1).
The public has become
accustomed to identifying a particular brand of running shoe or sports shirt
based solely on a distinctive sign. The widespread use of advertising on
television, internet and media has affirmed, in the eyes of the relevant
public, the power of a sign, even a relatively simple one, to act as a
distinctive sign (R
125/2013-2).
The contested position
trade mark cannot be considered a simple and banal geometric shape. On the
contrary, considering its location, characteristics and dimensions, it appears
that the combination of these characteristic elements and the familiarity of
the relevant consumer with this type of product, the consumer perceives the
trade mark not as a mere decorative, ornamental or functional element, but as
an indication of origin in relation to the footwear products included in
classes 9 and 25.
For a distinctive
sign, including a position trade mark, it is enough to allow the interested
public to distinguish the product or service from those that have another
commercial origin.
Although it is not
possible to accept that any sign located in the specific position at issue will
automatically be perceived as a trade mark, the fact that the consumer identifies
that specific area of the product as the one where manufacturers usually place
their distinctive signs allows to reduce the threshold of complexity required
for the sign to be able to perform its main function of identifying commercial origin.
Comment
While the decision
still shows how the topic of distinctiveness of a position trade mark is
dependent on the discretion of competent authorities and hence varies from one
case to the other, it is interesting because it attributes intrinsic validity
to position trade marks without need to consider the distinctiveness acquired
as a result of the possible use. It is worth recalling that initially authorities
were hesitant in accepting the possibility of “acquired distinctiveness” of a
position trade mark. One of the longest legal cases based on position trade marks
is Shoe Branding Europe BVBA v. Adidas and OHIM (as reported by IPKat here).
The decision at issue looks like a step – nearly in a literal sense – forward.
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