Five stripes and you're out -- The GC on decorative marks

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Stripes appear to be a big deal in the clothing field. In the landmark Adidas decision [Case C-102/07, on which see the IPKat’s note here], the Court of Justice of the European Union (CJEU) established that three parallel stripes may play a distinctive role and, under certain conditions, trade marks covering them can prevent the use two stripes even even if used in a merely descriptive way. Some days ago, the General Court (GC) gave its assessment in another striking stripe case. The stripes at issue were five and represented on the side of sport shoes [Case T‑85/13, K-Swiss Inc v OHIM and Künzli SwissSchuh AG].

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The dispute concerned the sign in subject of the Community figurative trade mark application No 4771978 (above), which the applicant K-Swiss Inc registered in 2007 with reference to “footwear” in class 25. 

In 2009, the Swiss company Künzli SwissSchuh AG (‘Künzli’) [the opponent Künzli Swiss is Swiss; the applicant K-Swiss is American; the confusing similarity between companies' names is only due to the irony of destiny] made an application for invalidity, claiming that K-Swiss’ trade mark was devoid of distinctive character under what is now Article 7(1)(b) of the Community Trade Mark Regulation 207/2009. Both the Opposition Division and the Board of Appeal granted Künzli’s application, holding that there was nothing about that sign that made it distinguishable from the appearance of the product. 



K-Swiss filed appeal to the GC, which upheld the Board of Appeal’s decision.

The GC first observed that the trade mark consisted of “the two-dimensional representation of the shape of a shoe with five parallel stripes on its side”. As the five stripe sign cannot "be disassociated from the products it designates, namely shoes", the GC considered it to be "indistinguishable from the appearance of the products designated".

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Consumers are not used to making assumptions as to the commercial origin of products on the basis of signs which are indistinguishable from the appearance of the products themselves. As a consequence, the GC stated, such signs could successfully reach trade mark protection only inasmuch as they pass two different tests:

(a) First, they have to “depart significantly from the norm or customs” of the field. As the CJEU’s case law proves, such requirement applies to any kind of trade mark which is indistinguishable from the appearance of the products, be it a three-dimensional trade mark [Procter & Gamble v OHIM, Joined Cases C-473/01 P and C-474/01 P; Mag Instrument v OHIM, Case C-136/02 P and Deutsche SiSi-Werke v OHIM, Case C-173/04 P), a figurative trade mark consisting of a two-dimensional representation of the product designated (Storck v OHIM, Case C-25/05 P, and Henkel v OHIM, Case C-144/06 P), or a sign consisting of a design applied to the surface of the product (order in Case C-445/02 P Glaverbel v OHIM).

(b) If the first test is passed, examiners must then ascertain that the sign does not play a merely decorative role. According to the GC, this is the case whenever “a design applied to the surface of a product [is] 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”.

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As to the first test, K-Swiss claimed that sports and leisure shoe consumers are accustomed to get information as to the commercial origin of products from simple signs. That would be particularly true for stripes, whose distinctive use was a long-standing practice in the sector. However, the applicant argued that the trade mark at stake departed significantly from the norm of the field because the number of stripes depicted in it was unusual: since that number was limited to 5, consumers could have easily identified them as a distinctive sign of its products [indeed, agrees Merpel: counting the stripes on shoes’ sides could be the new barcode -- 5 stripes correspond to K-Swiss; 3 is Adidas; 4 is Paciotti; 2 is MarcaMode’s; one is for everyone and no one]. Further, K-Swiss alleged that, in the sub‑category of business and dress shoes, placing designs on the side of the shoes was not common. For this reason, the trade mark at stake had to be considered as unusual in that part of the field.

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The GC dismissed K-Swiss’ arguments, finding that the applicant failed to provide evidence that the five parallel stripes applied to the external surface of shoes significantly departed from that which was customary in the the field. Moreover, the GC interpreted the circumstance that business shoes do not normally bear trade marks on their side as a further confirmation that the relevant public is not accustomed to considering designs applied to their surface to be an element identifying their commercial origin. In any case, as the trade mark at stake designated “footwear” in general, the GC found such argument irrelevant.

As to the second test, K-Swiss tried to convince the GC of the five stripes’ capability to be perceived as non-merely decorative by relying on the registration of a number of Community and national trade marks covering that very element, some of which were lodged by K-Swiss itself. The circumstance that OHIM and national offices considered that sign distinctive in the past, argued K-Swiss, confirmed the distinctive function of the five stripes.

Let's go!

In respect of the Community trade marks, the GC held that “OHIM must take into account the decisions already taken in respect of similar applications” but that, nonetheless, “principles of equal treatment and sound administration must be consistent with respect for legality”. Consequently, the GC continued, one “cannot rely, to his advantage and in order to secure an identical decision, on a possibly unlawful act committed to the benefit of someone else” [is this a British-style, understatement suggesting that some Community trade marks are actually unlawful, Merpel wonders?], and that, given that factual and legal circumstances diverge from case to case, the examination of every trade mark application has its own individual story.

The GC found to be equally irrelevant the circumstance that K-Swiss managed to have the five stripes registered as trade mark in eight Member States. Earlier national registrations are only one factor which may be taken into account when assessing the eligibility of a sign to be registered as a Community trade mark, the GC said, and OHIM is under no obligation to follow the assessment of the competent national authorities or to register the mark at issue as a Community trade mark on the basis of those considerations.