K-Swiss, Inc v OHIM and Künzli SwissSchuh AG, Case T-85/13, EU:T:2014:509, General Court of the European Union, 14 June 2014
Journal of Intellectual Property Law & Practice (2014) doi: 10.1093/jiplp/jpu224, First published online: December 3, 2014
The General Court of the European Union has recently decided that the following Community trade mark registration owned by K-Swiss, Inc for ‘footwear’ is invalid on absolute grounds as it lacks distinctiveness.
K-Swiss applied for the contested mark in December 2005 in respect of ‘footwear’. The application was published in July 2006, and the contested mark was registered in August 2007.
In February 2009, Künzli filed an application for a declaration of invalidity against the contested mark in its entirety at the Office for Harmonisation in the Internal Market (OHIM). The Cancellation Division of OHIM assessed the matter and referred to the fact that manufacturers of sports and leisure shoes often place figurative and decorative elements as trade marks on the sides of shoes, particularly because sports shoes are frequently presented to consumers side-on, on shelves in stores. The Cancellation Division accepted that this is a common practice to which consumers are accustomed and confirmed their view that consumers can in principle be guided by such practices to indicate the commercial origin of a product they are purchasing.
The Cancellation Division added, however, that very simple elements, for example seams which are purely decorative or required for technical reasons, cannot be considered to have distinctive character. In light of this, the Cancellation Division upheld the application for a declaration of invalidity on the basis that the contested mark did not provide ‘an adequate point of contact for a function that indicates the commercial origin’ of the shoes, as consumers would view the five stripes as necessary to reinforce the shoe or as an indistinct embellishment.
K-Swiss appealed to the Second Board of Appeal of OHIM, and, in October 2012, the Board dismissed the appeal. The Board held that signs which are indistinguishable from the appearance of the goods themselves will only be distinctive if they depart significantly from the norms or customs of the sector. Accordingly, the Board considered that the contested mark did not possess the minimum degree of distinctiveness required for registration as it was not distinguishable from the appearance of the product which it covers (ie a shoe) and did not possess any distinctive character in relation to those goods. In particular, the Board considered that the contested mark
… does not depart significantly from the standard designs that are shown on the sides of these kind of goods and will be perceived simply as decorations, namely a variation of the patterns commonly found on shoes, without a characteristic, memorable or eye-catching feature in the sign that would make it distinguishable from the appearance of a part of that product and that endows it with distinctive character for the goods in question (Case R 174/2011-2, at Para.31).The Board agreed with the Cancellation Division that the contested mark would be perceived as embellishment rather than an indicator of origin.
The Board was not persuaded by K-Swiss's arguments that similar marks had previously been registered by OHIM: every individual mark must be assessed on its own merits. The Board also dismissed K-Swiss's evidence that the contested mark had been registered in a number of European Union Member States, pointing out that OHIM must base its decisions solely on the Regulation.
K-Swiss appealed to the Court of Justice of the European Union (CJEU) which dismissed its appeal. The court confirmed that the contested mark was indistinguishable from the appearance of the product it designates, ie shoes. According to the court, this was so even if the contested mark was characterized as a ‘position mark’ (as K-Swiss argued it should be). The court considered that, even if the contested mark was limited to five parallel stripes to be positioned on the side of shoes, it would still be a design intended to be placed on part of the products and therefore could be distinguished from the appearance of the products, as it is likely to be considered by consumers to be merely decorative.
The court agreed with the Board's finding that consumers would not consider that decorative elements on the sides of shoes are indicators of the commercial origin of the product, unless such elements have been fixed in the minds of consumers through intensive use.
The court also considered that the contested mark did not depart significantly from the customs or norms of the sector. Further, in order to be considered to have distinctive character,
… a design applied to the surface of a product must be capable of being apprehended without the product's inherent qualities being perceived simultaneously, so that the design can be easily and instantly recalled by the relevant public as a distinctive sign.Ultimately K-Swiss had not proven that the contested mark, applied to the external surface of business or dress shoes, could be apprehended without the intrinsic characteristics of those shoes being perceived at the same time.
In reaching its decision, the court considered a number of cases relating to shape marks, which essentially established that such marks are not capable of registration unless they depart significantly from the norms or customs of the sector. While this requirement is understandable when considering three-dimensional marks, where the basic design of the product is similar across the industry, it is more difficult to apply to two-dimensional designs such as lines and patterns, where it is harder to argue that there is an industry norm as such.
The decision also suggests that simply stating that a mark is intended to be a ‘position mark’ will not assist an applicant in registering a mark which is inherently lacking in distinctiveness. Nor does the fact that some signs placed on the side of shoes have acquired distinctive character through use suggest that consumers have learned to establish a link between any sign placed on the side of a shoe and a particular manufacturer.
Perhaps most importantly, the General Court stated:
[I]n order to be conceded distinctive character, a design applied to the surface of a product must be capable of being apprehended without the product's inherent qualities being perceived simultaneously, so that the design can be easily and instantly recalled by the relevant public as a distinctive sign.The fact that the K-Swiss registration did not include a verbal indication noting that the registration covered the mark as applied to the sides of shoes was not necessarily determinative, but it did not help its case. Nevertheless, the court seems to be saying that the fact that a sign is intended to be a ‘position mark’ is not a valid argument that will assist in claiming inherent distinctiveness.
This case is the latest in a line of recent cases at both OHIM and the CJEU which have the effect of making it more difficult to register marks such as these. It is hoped that further guidance will ultimately be forthcoming on the question of when a mark may be held to be indistinguishable from the appearance of the relevant product, as many logos and trade marks are applied to products such as t-shirts and sweatshirts in a similar manner to the five stripes in this case. If such marks are to be treated in the same way as the contested mark, a high hurdle has been set for trade mark owners. At the time of writing, no appeal has been filed in this case.