Unconventional fashion trade marks: how easy is it to register them? [Spoiler: not so much]

This week I attended the IP Case Law Conference, organized by the European Union Intellectual Property Office in what was factually accurate and often referred to during the 2-day event as “sunny Alicante”.

This year’s edition also celebrated the 25 years of the EUIPO Boards of Appeal.

The conference, which from now on will be a yearly event, was excellent: during the two days of proceedings, over 50 speakers covered topical issues and recent case law spanning all substantive IP rights: not just trade marks designs and geographical indications (all areas over which the EUIPO does have competence), but also copyright and patents. The event was also the biggest one ever organized by EUIPO, with over 1,000 participants attending either in person or remotely from over 50 countries.

I also had the honour to contribute to the programme with a presentation on fashion and IP.

Among the issues that I covered in the 10 minutes at my disposal there was the registrability of less conventional fashion marks.

In this post, I would like to discuss the main conclusion that I reached after reviewing case law of both the EUIPO and the EU courts issued over the period 2020 – 2022 alone. That conclusion, likely not too shocking to anyone, is the following: less conventional marks remain (very) difficult to register.

The rise of the substantial value ground

One issue is the growing relevance of the absolute ground for refusal/invalidity concerning signs that consist exclusively of a shape or another characteristic that gives substantial value to the goods (Article 7(1)(e)(iii) EUTMR/4(1)(e)(iii) EUTMD).

Such a ground, considered quite niche if not altogether meaningless for a long time, is on the rise in both frequency of application and importance (see here for a longer take, available on an open access basis).

In the fashion sector, for example, Louboutin risked losing (Louboutin, C-163/16) its red sole trade mark registration over a substantial value claim [Katposts here]. More recently, in Gömböc, C-237/19 [Katposts here], the Court of Justice of the European Union (CJEU) clarified that substantial value is not just about being ‘pretty’: factors like the story of the creation of a shape, its method of production, the materials, or even the identity of the designer can also lead to the application of this absolute ground (see para 60).

The “significant departure” test for distinctiveness

Another issue, statistically still dominant for less conventional signs, is distinctiveness Article 7(1)(b) EUTMR/4(1)(b) EUTMD).

For marks consisting of patterns or shapes, the threshold to pass is not an insignificant one.

While the test of distinctiveness is in principle the same across different types of marks, for less conventional marks consumers are taken as not being in a position to consider patterns or shapes as indicators of commercial origin per se. As a result, “only a mark which departs significantly from the norm or customs of the sector of the goods and services at issue and thereby fulfils its essential function of indicating origin is not devoid of any distinctive character” (Vuitton, T-105/19, para 17).

Over the past two years alone, the following marks failed to satisfy the “significant departure” test:

A significant – though rather isolated – exception in this review is Guerlain, T-488/20 [IPKat here], a case concerning trade mark registration of the shape of the Rouge G de Guerlain lipstick case as a trade mark for “lipsticks” in class 3. The General Court concluded that the applicant’s shape is unusual for a lipstick in that it reminds one of a boat hull or a baby carriage. As such, it differs from any other shape on the market. The relevant public with a level of attention ranging from medium to high will be surprised by Guerlain’s easily memorized shape and will perceive it as significantly deviating from the norms and customs of the lipstick sector. As a result, trade mark registration would be available.

Comment

There are clear public interest justification underpinning both the substantial value absolute ground (as well as the other functionality grounds) and the approach to distinctiveness of marks consisting of, e.g., patterns and shapes.

First, there is a clear concern that allowing certain registration would pose the risk of unduly restricting competition: see, eg, Philips, C-299/99, para 78; Opinion of Advocate General (AG) Ruiz-Jarabo Colomer in Linde, C-53/01 to C-55/01, para 21; Opinion of AG Wathelet in Nestlé, C-215/14, para 60 and resulting CJEU judgment, para 44.

Secondly, trade mark law should not become a means to extend unduly and potentially perpetually the IP protection available under other IP rights, notably design rights and copyright: see, e.g., Opinion of AG Szpunar in Hauck, C-205/13, paras 36 and 37 and resulting CJEU judgment, para 19; see also Opinion of AG Szpunar in Simba Toys, C-30/15 P, para 35.

All the above said, it is possible to rely on different IP rights simultaneously or at a different time to protect valuable ‘objects’. Again in Gömböc, the CJEU acknowledged that nothing prevents IP rights’ overlaps, provided that the relevant requirements under the respective regimes are fulfilled.

The fashion sector provides some recent examples in which one could successfully obtain or enforce a trade mark but not copyright, or vice versa:

• In 2020, the Italian Supreme Court found that the layout of the KIKO make-up stores would be protectable by copyright. A few years prior, seeking to follow on the footsteps of Apple, C-421/13, KIKO sought to obtain a trade mark registration for its store layout but failed on ground of lack of distinctiveness;
• In late 2021, the Milan Court accepted that Longchamps could enforce its trade mark registration relating to the shape of its iconic Le Pliage bag, but refused to consider such a design also protectable under copyright.

In conclusion: like the fashion sector always strives to be creative, so should be the lawyers setting up protection and enforcement strategies. See you next year in always-sunny Alicante for the next IP Case Law Conference!