The Birkenstock pattern mark saga continues

Birkenstock’s sole pattern is quite well-known and has been the subject of several decision in the EU. As has been reported here, Birkenstock’s pattern mark 

was considered to lack distinctiveness as an EU and Benelux trade mark. Now, the German Patent Court confirmed that a position mark showing the Birkenstock pattern also lacks distinctiveness (case no. 28 W (pat) 24/18).

Background

In 2016, Birkenstock obtained protection for the following position mark in Germany (registration no. 3020150531693).

It was registered for a broad range of goods in classes 10, 18 and 25 with the following description:

The trade mark is claimed as a position trade mark ‘sole pattern’ with the following description: trade mark protection for the sole of shoes, in particular sandals, clogs and slippers, which consist of a pattern composed of waves consisting of circular arcs intersecting at an angle of 90 degrees, whereby the areas of the sole surface enclosed thereby receive a bone-like visual impression.

A third party filed an invalidity application. In the course of the proceedings, Birkenstock surrendered the trade mark partially, so that only certain goods in classes 10 and 25 remained, including ‘orthopedic items; orthopedic shoes’, ‘footwear’ but also ‘parts and accessories of […] footwear, namely shoe uppers, heels, outsoles, insoles, shoe bottom parts’.

The invalidity applicant claimed, inter alia, that Birkenstock’s trade mark lacked distinctiveness and that the trade mark was not sufficiently clear and precise for those goods that did not have a sole.

The German Patent and Trade Mark Office declared Birkenstock’s trade mark invalid due to lack of distinctiveness. Birkenstock appealed to the German Patent Court.

The German Patent Court’s decision

The German Patent Court dismissed the appeal.

In assessing the distinctiveness, the Court reiterated consistent case law on pattern marks. The criteria to assess the distinctive character are the same for all types of trade marks. However, signs that consist solely of the shape or a three-dimensional representation of the goods are not necessarily perceived by the public in the same way as traditional word or figurative marks, which are independent of the appearance of the marked goods. In the absence of figurative or verbal elements, average consumers do not usually infer the commercial origin from the shape of the goods or their packaging. Therefore, such a trade mark only has inherent distinctive character if it deviates significantly from the norms or customs in the relevant sector and thereby fulfils its essential function of identifying the commercial origin. This case law also applies to signs consisting only of parts of the relevant goods.

When assessing the question whether the public regards a product design as customary, the focus must primarily be on the sector concerned. Designs from neighboring sectors can also be taken into account if, due to specific circumstances, the relevant public can be expected to transfer its perception to the sector concerned.

The Court applied these standards to Birkenstock’s trade mark. The decisive factor is not the classification of the mark as a position mark, but rather that the sign merges with the appearance of the marked goods.

The judges found that soles often have a profile for better grip, regardless of whether they are for work, leisure or sports. The Court referred to various sole designs, which stretched across the entire sole surface and were available prior to the application date, in particular the following:

Based on this prior art, the Court held that the contested trade mark shows an aesthetically pleasing and decorative pattern. It is merely a variant of soles with crossing and wavy lines.

Birkenstock argued that its pattern creates a bone-like impression. The Court rejected this argument because the relevant public would not perceive the pattern as bone-like.

Therefore, the trade mark was deemed non-distinctive for goods that have or are (part of) a sole.

The sign was also considered to be non-distinctive for goods which have no connection with soles, e.g. upper shoe parts. The Court found that the trade mark does not make sense for such goods because the description explains that protection is sought for the sole of shoes. Goods such as upper shoe parts are not soles nor do they have soles. The trade mark form (position mark) and the description are incompatible, which is why the mark cannot fulfil its origin function.

Comment

The General Court previously confirmed the cancellation of Birkenstock’s identical EU trade mark (T-365/20). Obtaining trade mark protection for the appearance of goods in the EU is limited to extraordinary designs, either because they are so unusual that they have an inherent degree of distinctiveness or because they have been used extensively and acquired the ability to indicate the commercial origin of the goods. 

An alternative to trade mark protection can be copyright. The Higher Regional Court of Hamburg, for instance, granted copyright protection to Birkenstock’s “Madrid” model, which was created in the 1960s:

On that basis, the court rendered a preliminary injunction against similar looking shoes (case no. 5 W 40/21).