To be or not to be (a pattern mark) – that is the question!

With apologies to Hamlet--when is a mark a pattern mark? Kat friend Jan Jacobi reports on recent cases on this challenging issue involving efforts by Birkenstock to register such a mark.

To be a pattern mark: EUIPO v. Birkenstock

Birkenstock is the proprietor of a national German mark (see below). Birkenstock tried to extend this mark (via an IR) as a EUTM for several classes of goods, including in Class 25 (shoes and clothing). This attempt failed over several instances (respectively the Examination Division of EUIPO, the First Board of Appeal, and the General Court), on the ground that the mark was deemed to be devoid of any distinctive character (within the meaning of article 4.1(b) TMD). Birkenstock then appealed to the CJEU, which rejected the appeal.
A central aspect in the decision by the CJEU (Tenth Chamber) concerned the examination of the intrinsic distinctive character of the Birkenstock mark. EUIPO had ruled that the ‘strict test’ applicable to signs that are indissociable from the appearance of goods (as formulated in Henkel and Freixenet), should also apply to pattern marks.

According to this test, the Birkenstock mark could only have intrinsic distinctive character if the depicted pattern differed significantly from other patterns in the shoe and clothing sector. Given that the pattern essentially consisted of simple geometric shapes (wavy crisscrossing lines) common for shoes and clothing, EUIPO found the strict test had not been satisfied.

In its defence, Birkenstock alleged that applying the strict test depended on whether the use of the mark as a surface pattern was also the most likely use. Birkenstock claimed this was not the case, given that other uses of the mark (e.g., as a logo affixed to a shoe) were also conceivable. Consequently, it argued, the mark could not be disqualified on the basis of article 4.1(b) TMD for merely being a common surface pattern.

The CJEU disagreed. It stated that the strict test should be applied if, considering the intrinsic characteristics of a sign, there is an inherent possibility that the sign will be used as a surface pattern and therefore such use is not unlikely (which is a lower threshold than use being ‘most likely’). The CJEU confirmed the General Court’s earlier finding that due to the ‘repetitive sequence of elements’ of the wavy lines, which can extend infinitely in all four directions of the square and therefore be applied to any two- or three-dimensional surface, there indeed was a probability, inherent to the Birkenstock mark, that the mark would be used as a surface pattern.

To not be a pattern mark: the #Darferdas judgement?

In parallel to the CJEU case, Birkenstock also defended the identical mark (as a Benelux mark) before the Dutch courts. Having lost at first instance, Birkenstock stated on appeal (before the Court of Appeal of the Hague) that the result in the Birkenstock v. EUIPO case was no longer germane in light of the later issued judgment by the CJEU in the #Darferdas case. In this latter judgement, the CJEU had found that--:
'…in examining the distinctive character […] all relevant facts and circumstances must be taken into account, including all the likely types of use the mark applied for. The latter correspond, in the absence of other indications, to the types of use which, in the light of the customs in the economic sector concerned, can be practically significant' (point 33).
As applied to its mark, Birkenstock once again argued that the use of the mark as a logo, a label, or as a ‘symbol as such’, was a likely type of use. The mark was, therefore, not a pattern mark per se, and thus the strict test should not apply when examining its distinctive character.

The court was not convinced. In its judgement (5 October 2021), it concluded that #Darferdas only applies to signs that are not indissociable from the appearance of the goods. In support of this conclusion, the court refers to the Hästens judgement rendered by the General Court (after the #Darferdas judgement), where the General Court held that:
'First, the applicant claims that the trade mark application concerns the two-dimensional figurative sign which is used as a logo on its marketing material and on the labels attached to its products. As EUIPO correctly stated, the mark must be assessed as it was filed, not as it is used. Accordingly, the applicant could have filed the mark applied for as a logo or a label with a frame. However, it is apparent from the application for registration that the applicant filed the mark applied for without adding a description to restrict the scope of the protection to the logo or the label mentioned above and without specifying where the mark might be positioned on its products. As a result, the mark is sought in respect of a scope of protection that covers all possible uses as a figurative mark, including as a pattern applied to the surface of the goods in question, making the case-law cited in paragraphs 23 and 24 [the strict test] above applicable' (point 36).
Applying the above to the Birkenstock mark, the court concluded (similar to the earlier mentioned findings of the General Court) that due to the infinite sequence of wavy lines and the absence of a frame, the mark was particularly ‘well suited’ to be used as a surface pattern, as it could be applied to any two- or three-dimensional surface.

Then, applying the strict test, the court held that Birkenstock had failed to demonstrate why the pattern differed significantly from other patterns in the clothing and shoe sector. Birkenstock's claim that it had designed the pattern and it had been the first on the market to use that design, was considered by the court to as insufficient to consider that the pattern itself also significantly different from other patterns in the shoe and clothing sector.

Interestingly, the court also concluded that if the #Darferdas judgement were to apply, Birkenstock had failed to substantiate why the use of its mark as a logo or label is of practical significance in the clothing and shoe sector.

Being unable to prove distinctive character through use, the court confirmed the judgement in first instance, finding the Birkenstock mark invalid pursuant to article 2.28(1) of the Benelux Convention on Intellectual Property (being the implementation of article 4.1(b) TMD).

To be or not to be – what is the question?

Did the Hague Court of Appeal err in dismissing the relevance of the #Darferdas judgement? Indeed, this guest Kat does not share the view of the court that the #Darferdas judgement only applies to signs that are not indissociable from the appearance of the goods.

The #Darferdas judgement does imply that the principle of ‘likely use’ should only be adopted where, upon examination of the distinctive character, there is no indication whatsoever on how a sign will be used.

In cases where an indication of use is fully absent, it seems justified to consider likely cases of use (and not merely theoretical or insignificant types of use). If so, one could argue that if a sign has characteristics that make a certain use inherently possible (such as being a surface pattern), there is already an indication of use.

As such, the #Darferdas judgement does not fully provide an answer, contrary to what the Court of Appeal concluded, on the question whether that also means that all other likely and significant types of use should not be taken into account.

What these Birkenstock cases illustrate is that the probability of a mark being used a pattern mark can significantly impact the examination of its (inherent) distinctive character, and thus its potential to be successfully registered.

Picture on the right is by Hans, and is licensed under a Creative Commons CC0 1.0 Universal Public Domain Dedication license.

Picture on the left is of a painting by Vincent van Gogh ("Pair of shoes") and is in the public domain.

To be or not to be (a pattern mark) – that is the question! To be or not to be (a pattern mark) – that is the question! Reviewed by Neil Wilkof on Tuesday, November 09, 2021 Rating: 5

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