General Court rejects 5-stripes shoe mark

In its judgment of 4 December 2015 in case T-3/15 the General Court upheld OHIM’s assessment that the below mark lacks distinctive character and added some more pages to the history of position marks in Europe.

In 2013, K-Swiss Inc., filed with OHIM an application for protection in the European Union of International Registration No 932758 (above depicted) in connection with ‘athletic shoes, namely tennis shoes, basketball shoes, cross-country and jogging shoes and casual shoes’, in Class 25.

Both the Examiner and, on appeal, OHIM’s Second Board of Appeal refused registration of the mark on the basis of Art. 7(1)(b) of Regulation No 207/09.  The Board of Appeal  essentially held 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 (paragraph 21 of the contested decision) [this blogger wonders whether the Board of Appeal considered that such widespread practice includes look-alikes and may well be widespread because of them]. Moreover, with regard to the relevant public’s attention, OHIM’s BoA held that while it is possible that the consumer will be more attentive to the choice of branded goods, in particular when he or she buys particularly expensive shoes, such an approach on the part of the consumer cannot be presumed without evidence with regard to all goods in that sector (paragraph 22 of the contested decision). Further, it ruled that evidence provided by K-Swiss  does not demonstrate that it is the usual practice of OHIM to register, as a mark for sports shoes, designs consisting only of stripes (paragraph 23 of the contested decision) and finally, as a classic icing on the cake, that the legality of the decisions of the Boards of Appeal must be assessed on the basis of Regulation No 207/2009, as interpreted by the Courts of the European Union, and not on the basis of a previous decision-making practice of OHIM (paragraph 26 of the contested decision) [while this blogger cannot argue with that principle, he still feels it can be a nice way out of facing the consequences of OHIM’s past practice, whether good or bad].

K-Swiss raised two pleas in law before the General Court: the first alleging  infringement of Article 7(1)(b) of Regulation No 207/2009, and the second alleging  infringement of Article 76(1) of the said Regulation.

Regarding the first plea in law, the General Court noted that the mark consists of stripes placed on a shoe, and the parties, in their pleadings, are in agreement on that point.

General Court's opinion on the mark at issue

The Court concurred with the Board of Appeal that stripes are nothing more than a rather banal generic embellishment [so why is adidas’s 3-stripe mark recognized as a famous one in a good number of jurisdictions in Europe? Is it only extensive use?] and ruled  that the mark applied for 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 it is unlikely to acquire distinctive character simply because it is placed on the side of the shoe.

To support its reasoning the Court relied on the thought that “many manufacturers of sports shoes or casual shoes use relatively simple patterns of lines or stripes which they also place on the side of the shoe” and that the fact that the sign in question extends to the full height of the side of the shoe confirms its lack of originality, since the variation in the size of the stripes appears to be naturally determined by the actual shape of the object on which those stripes are placed. This, according to the Court, contributes to preventing the sign from being apprehended without the product’s inherent qualities being perceived simultaneously.

Consequently, the mark, as placed on the side of the shoe, cannot immediately be apprehended as constituting an indication of the commercial origin of the goods concerned.

K-Swiss’s argued that this runs contrary to the “customs of the market in question”, where placing the manufacturer’s mark on the side of the shoes is a common practice, which has ‘educated’ consumers to paying aparticular attention to the shapes placed there and to  naturally consider them to be trade marks. The Court, however, found the relevant info submitted as not making it possible to come to such conclusion [so this Kat understands that someone else may in the future be luckier in this regard] and added that “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”.

Addressing K-Swiss's arguments regarding its relevant case law, the Court held that in the judgment of 13 April 2011 in Deichmann v OHIM (Representation of a chevron with dotted lines), T‑202/09,[only for French or German speaking readers I'm afraid] it “at most merely made reference to the existence of a ‘practice of placing a sign on the exterior of the shoes as an indication of their commercial origin which essentially concerns sports shoes and casual shoes’”. The same thought apply mutatis mutandis to paragraphs 49 to 51 and 77 of the judgment of 6 November 2014 in Vans v OHIM (Representation of a wavy line), T‑53/13, also invoked by K-Swiss.

Irrespective of the above, the Court held that K-Swiss had not adduced sufficient evidence to establish that, in view of the banal nature of the sign at issue, the average consumer would consider that sign to be an indication of the origin of the goods at issue and not a mere decorative element and 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 [the consumer welfare "touch", which looks a bit uncalled for in this situation].

As far as the issue of whether OHIM has in this case [too] disregarded, without good reason, its own decision-making practice, the Court reiterated that “the way in which the principles of equal treatment and sound administration are applied must be consistent with respect for legality. Consequently, a person who files an application for registration of a sign as a trade mark 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.”

K-Swiss’s second plea in law was that the the Board of Appeal ought to have supplemented the evidence at its disposal, as under Article 76(1) of Regulation No 207/2009, OHIM must examine of its own motion the relevant facts that could lead it to apply an absolute ground for refusal set out in Article 7(1) of that regulation. The Court rejected this plea as well stating that the fact remains that if an applicant claims that a trade mark applied for is distinctive, despite OHIM’s analysis, it is for that applicant to provide specific and substantiated information to show that the trade mark applied for has an intrinsic distinctive character.