Can geometric signs on footwear be distinctive? Yes, says EUIPO

By decision of 9 October 2023, the Board of Appeal (BoA) of EUIPO annulled the initial refusal to register a position trade mark for footwear.  After noting that consumers are accustomed to the presence of geometric signs in the footwear sector, the Board of Appeal ruled that the contested sign is sufficiently striking and memorable to be distinctive.

 

Background

 

On 12 April 2022 Paredes Holding Center SL (the Applicant) filed an application for the EU registration of the position trade mark no. 18686228 in classes 9 (safety and protection footwear at work) and 25 (footwear including boots, shoes and sneakers):

 

By decision of 25 April 2023 (the decision is available in Spanish), the EUIPO examiner refused the application due to lack of distinctiveness pursuant to art. 7 (1)(b) of the EUTMR. In short, the examiner found that:

a) the assessment of how a position trade mark can be perceived by the public as an indication of the origin of the product implies the examination of the overall impression produced by the appearance of that sign;
b) admitting that every geometric shape, even the simplest, has a distinctive character because it is located on the side of a sports shoe, would allow some manufacturers to get a monopoly over simple decorative shapes, which must continue to be accessible to everyone, except for those situations in which the distinctive character of the sign has been acquired through use;
c) the European Court of Justice (ECJ) has established that, although it is common practice to place decorative elements on footwear and for many variations of geometric shapes to appear on the side of the footwear, consumers do not consider these elements as an indication of the origin of the products, unless they have retained them in their memory due to their wide and intensive use;
d) the ECJ has also addressed that it is common to apply decorative elements to shoes. Thus, in the case at issue, the side of a shoe cannot be considered a “special position”, as it is one of the places where decorations can most easily be applied because there are fewer space restrictions;

e) therefore, the average consumer will see the applied for position mark simply as a banal/ordinary decorative element and will not perceive it as a badge of the commercial origin of the product.

The Applicant appealed.

 

The decision of the Board of Appeal

 

The BoA overturned this refusal and found the contested position trade mark to be distinctive.

 

i) Relevant public

Footwear products in class 25 are common consumer goods and the level of consumer attention is medium (T-817/16, T-568/15), while safety and protection footwear in class 9 are mainly directed to professional public, whose level of attention is higher (R 2292/2020).

 

ii) Characteristic and distinctiveness of position trade marks

Position marks’ purpose is to place figurative or three-dimensional elements on the surface of the product. The decisive factor in determining whether the sign has distinctive character is the fact that the sign is not distinguishable from the appearance of the product (C-26/17). According to the case law, a sign applied to the surface of a product is distinctive if it can be perceived as an independent distinctive element (T-85/13).

 

iii) The trade mark at issue

Contrary to the decision by the Examiner, the BoA found that the trade mark applied for is the representation that combines a series of geometric elements formed and joined by a line of constant thickness. These elements consist of a compass-shaped shape (chevron) facing to the right, combined with a straight line, the length in the horizontal plane of the latter element being considerable with respect to the first. This combination of geometric elements gives the sign a sufficient degree of complexity that allows it to be distanced from what could be described as a mere basic geometric figure.

The sign can be therefore considered sufficiently memorable for the purposes of performing its function as an indicator of commercial origin and there is no reason to think that it is a functional piece of sewing, or that it is woven into the shoe as part of its necessary construction. The sign can be considered independent from the product.

 

iv) Common use of position trade marks in the foot wear sector

From the evidence filed by the Applicant, it emerges that is common for footwear manufacturers to show the same sign on their products (lines, stripes, geometric shapes or a combination of these) always in the same place on the outside of the product, making it visible from distance. The average consumer of this type of product is accustomed to this type of position trade marks and, in principle, can be guided by them when purchasing the product (R 938/2000, R 813/2002-1).

The public has become accustomed to identifying a particular brand of running shoe or sports shirt based solely on a distinctive sign. The widespread use of advertising on television, internet and media has affirmed, in the eyes of the relevant public, the power of a sign, even a relatively simple one, to act as a distinctive sign (R 125/2013-2).

The contested position trade mark cannot be considered a simple and banal geometric shape. On the contrary, considering its location, characteristics and dimensions, it appears that the combination of these characteristic elements and the familiarity of the relevant consumer with this type of product, the consumer perceives the trade mark not as a mere decorative, ornamental or functional element, but as an indication of origin in relation to the footwear products included in classes 9 and 25.

For a distinctive sign, including a position trade mark, it is enough to allow the interested public to distinguish the product or service from those that have another commercial origin.

Although it is not possible to accept that any sign located in the specific position at issue will automatically be perceived as a trade mark, the fact that the consumer identifies that specific area of the product as the one where manufacturers usually place their distinctive signs allows to reduce the threshold of complexity required for the sign to be able to perform its main function of identifying commercial origin.

 

Comment

While the decision still shows how the topic of distinctiveness of a position trade mark is dependent on the discretion of competent authorities and hence varies from one case to the other, it is interesting because it attributes intrinsic validity to position trade marks without need to consider the distinctiveness acquired as a result of the possible use. It is worth recalling that initially authorities were hesitant in accepting the possibility of “acquired distinctiveness” of a position trade mark. One of the longest legal cases based on position trade marks is Shoe Branding Europe BVBA v. Adidas and OHIM (as reported by IPKat here). The decision at issue looks like a step – nearly in a literal sense – forward.