[Guest post] Gilding the lily: The shiny challenge of registering gold soles as trade marks

The IPKat has received and is pleased to host the following guest contribution by Katfriend Louise Rooms (Católica Global School of Law) on a recent decision of the Examination Division of the European Union Intellectual Property Office (EUIPO) concerning position marks (specifically: golden soles). Here's what Louise writes:

Gilding the lily: The shiny challenge of registering gold soles as trade marks

by Louise Rooms

Golden soles ...

The EUIPO has recently refused a trade mark application for a specific product configuration consisting of a metallic gold sole on footwear (depicted on the right). It considered the sign to be devoid of any distinctive character and therefore unable to fulfil its core function as a trade mark. In the wake of the recent Louboutin's red sole trade mark challenges, the refusal of a gold sole trademark application invites some reflections about the future of this type of trade marks.

The applicant, a Puerto Rican company (Yeshua Investment consulting LLC) sought to register the sign above for the marketing of goods within Class 25, more specifically "metallic gold outer soles sold as an integral component of men's and women's shoes".

The mark, as stated, consists of the product configuration of a metallic gold sole on footwear. It should be noted that this wording is very similar to the description used in the registration of the Louboutin red sole trade mark. According to the ruling of the European Court of Justice on this mark, applying a colour to a specific part of the shoe can constitute a trade mark and fall outside the substantial value absolute ground.

Distinctiveness of the mark needs to be assessed with reference to the goods and/or services for which protection is sought and the perception of the relevant public. The relevant public was considered to be the general public within the European Union. This is intriguing if we recall that, in relation to the Louboutin red sole it was also suggested that the average consumer of the goods are not the general public but rather "consumers of women's high-heeled shoes."

The criteria for assessing distinctiveness are the same regardless of the category of sign or mark. Nevertheless, the perception of the average consumer will be influenced by the type of sign of applied for. In this case, the Office regarded the application as a position sign, which is inseparable from the appearance of the product itself and is affixed to it a specific way. Therefore, it will not usually be seen as an indication of origin in itself. That is so unless the sign deviates from industry norms in a significant way. This benchmark also applies to signs which are only applicable to an element of the appearance of the product, such as a sole of a shoe. Position marks can only be regarded as inherently distinctive if the consumer is able to recognize the sign as originating from a particular undertaking, setting them apart from other undertakings.

Another reason for this approach relates to goods, like those at issue here, which are available in a wide variety of designs. The EUIPO highlighted the fact that a metallic gold sole on footwear is quite commonly used for aesthetic purposes in the footwear industry.

The Office then specified its evaluation to the gold colour of the applied for sign. It noted that a single colour part of the appearance of the goods will not usually be perceived as an indication of origin. Colours are capable of conveying certain ideas; however they are more commonly used to advertise and market goods without any specific message. This constitutes established caselaw on colour marks, largely stemming from the precedent set by the Libertel case. The Office highlighted more specifically that a golden colour is often used to highlight the excellent quality of a given product, but does not convey a message about the origin of the goods itself. Given that the mark being applied for is a position mark as opposed to a colour mark, it is a little odd to assess its colour separately.

... and Kat heels

Neither the gold colour nor its position on the goods were regarded as having any distinctive value for the purposes of article 7 (1)(b) EUTMR.

Comment

The refusal by the EUIPO highlights the challenges associated with registering position marks, especially when they are considered inseparable from the overall appearance of the product. The EUIPO's emphasis on industry norms and the common use of a metallic gold sole for aesthetic purposes in the footwear industry underscores the difficulty in establishing inherent distinctiveness for such elements.

This case serves as a reminder that the distinctiveness of a mark must be assessed in the context of the goods or services for which protection is sought, taking into account the perception of the relevant public. As the boundaries of registrability for product configuration marks continue to be explored, the decision confirms an approach that might influence future applications involving similar elements.