Who: Case T‑3/15: K-Swiss Inc. v. Office for Harmonisation in the Internal Market (Trade Marks and Designs) (“OHIM“)
Where: EU General Court, Second Chamber
When: 4 December 2015
Law stated as at: 7 January 2016
K-Swiss holds an International Registration for a figurative 5-stripe motif mark for athletic shoes, as depicted below.
In 2013, K-Swiss applied to OHIM for protection of its International Registration in the EU. It sought to protect goods under Nice Class 25, with the eventual amended specification being: ‘athletic shoes, namely tennis shoes, basketball shoes, cross-country and jogging shoes and casual shoes’.
OHIM held that the mark was devoid of distinctive character and refused to grant protection to the mark (pursuant to Article 7(1)(b) of Regulation No 207/09). K-Swiss appealed.
In dismissing the appeal, OHIM’s Second Board of Appeal found, among other things, that:
“the five parallel stripes placed on the shoe do not have any original feature and are nothing more than a rather banal generic embellishment in view of the widespread practice of placing a stripe pattern on sports shoes“.
K-Swiss then appealed to the EU General Court.
EU General Court’s decision
K-Swiss appealed, alleging (among other things), infringement of Article 7(1)(b).
Under case law, a mark has distinctive character (within the meaning of Article 7(1)(b)), if it makes it possible to identify the product to which the mark is applied, as being from a particular undertaking (i.e. a particular company) and to therefore distinguish it from the products of other undertakings.
The distinctive character must be assessed by reference to the goods and/or services in respect of which registration is sought, and by reference to the perception that the relevant public has of those goods and/or services.
In addition, where an applicant claims that a trade mark is distinctive, it is for that party to adduce substantive evidence in support of its claim.
In applying the above criteria, the EU General Court found as follows:
The mark was “inherently banal”; did not “sufficiently depart from the widespread practice” of marking sports shoes with stripes; and “would not be perceived as an indication of commercial origin“. They further held the mark was unlikely to acquire distinctive character simply because it was placed on shoes.
K-Swiss argued that when considering whether a mark is distinctive, the customs of the market in question must also be taken into account. They submitted that it was commonplace for manufactures of sports shoes to distinguish their products by marking the side of the shoes with their logos. Accordingly, customers will pay particular attention to those marks and will perceive them to be indications of commercial origin.
The court rejected this argument. The information provided by K-Swiss was not in the Court’s view sufficient to establish that the average consumer had learned to make an “automatic link” between the sign on the side of the shoe and a particular manufacturer. The court also stated that the distinctive value of the shapes may be better explained by the intensive use to which they are put, as opposed to the particular positioning of the mark on a shoe.
K-Swiss further argued that case law of the General Court and Court of Justice had already established that, because of market practice, simple geometric shapes placed on the side of a sports shoe necessarily have a distinctive function and that OHIM ought to be bound to follow this (see Vans case T‑53/13 and Deichmann case T‑202/09). The court rejected this, finding that these previous decisions had not reached this conclusion. Assessing the legality of OHIM’s decision will be done by reference to the Regulation, and not to its previous decisions.
Why this matters:
The court did not conclusively dismiss the notion that the customary position of a mark on goods (specially, sports shoes) could in itself give rise to distinctiveness of a mark. However in this instance, K-Swiss had not adduced sufficient evidence of this apparent practice, and the court did not agree that previous decisions had established this in law either. This does not mean, however, that all future applicants would be barred from establishing distinctiveness of a mark based on its positioning on a shoe, provided an applicant could produce sufficient, persuasive evidence.
At present, OHIM will not allow the registration of shapes simply because they feature on the side of a shoe, unless the distinctive character of the sign has been acquired through use. This may have an effect on when fashion brand-owners should submit trade mark applications for similarly simple designs. First amassing evidence of intensive use should assist in establishing acquired distinctiveness. This of course in turn raises the risk of developing a valuable brand without sufficient IP protection. Brand-owners should therefore tread carefully and take specialist advice at an early stage.
Brand-owners should also be alive to the fact that OHIM will not necessarily conform to its own past practice. Trade mark applications are therefore not foregone conclusions and advice should be taken well in advance as how best to maximise the chance of a successful application.