Loro Piana position mark for footwear: not distinctive, says EUIPO

 

By decision of 26 April 2024 (available only in the original version in Italian), the European Union Intellectual Property Office (EUIPO) refused to register a position trade mark for footwear having considered that a band with a knot and ribbons with metal pendants affixed to the template of the upper part of shoes is very common in the footwear sector. Therefore the position sign lacks of distinctive character under Article 7(1)(b) of EUTMR, as it could not serve as a badge of origin of the products.

 

Background of the case

 

On 30 June 2023, fashion company Loro Piana S.p.A. (the Applicant) filed position trade mark no. 018895734 in Class 25 (shoes, loafers, babouche, sabot):

In the description the Applicant specified that the “The position mark consists of the combination of band+knuckle and ribbon+metal pendants, one in the shape of a padlock, the other in the shape of a ferrule (such pendants are typical of Loro Piana), which, as a whole, is applied to the upper mask covering the upper part of the foot, in whole or in part, and always positioned closer to the tongue than to the toe of the shoe. The dotted lines are not part of the position mark, but serve only to indicate the position and proportions of the mark in relation to the shoes on which it is applied”.

 

The decision

 

The EUIPO recalled the results of an on-line search conducted by the examiner, which led to the initial objection that the sign in question applied to the upper part of the shoe. As such, it would lack distinctive characteristics that could allow for it to be perceived as an indicator of commercial origin.

 

The Applicant raised arguments in support of the trade mark’s distinctiveness, highlighting that the use of the combination of strap, knot, and ribbons with metallic pendants dated back to 2005 and that there is an established practice in the footwear industry for using position marks (EU trade mark EU trade mark no. 018153472, EU trade mark no. 018734154, EU trade mark no. 017959016, EU trade mark no. 017970825, EU trade mark no. 018171317, EU trade mark no. 018171305) as well as case law (R-51/2006-4, R-2069/2020).  The Applicant stressed that the padlock and pendants are also protected as 3D trade marks under EUTM application no. 018840401 for the padlock and for the pendants under EUTM registration no. 018840443.

 

Moreover, according to the Applicant, the sign must be considered distinctive given that it is subjected to several cases of offline and on-line infringements.

 

The EUIPO recalled that, while the criteria for assessing distinctiveness are the same for the different categories of trade marks, it may become evident when applying these criteria that the expectations of the relevant public are not necessarily the same for all categories of trade marks and that, therefore, it may be more difficult to establish the distinctiveness of some categories of trade marks than others (C-456/01). Position trade marks are close to the categories of figurative and 3D trade marks in that they relate to the application of figurative or three-dimensional elements to the surface of a product. However, the qualification of a position trade mark as a figurative or 3D trade mark or as a specific category of trade marks is irrelevant in the context of the assessment of its distinctiveness (T-547/08). In addition, in the present case, while the graphic representation of the 3D trade marks filed by the applicant contains the distinctive wording “Loro Piana” or the letters “L” and “P”, these verbal elements lack in the application for the position trade mark.

 

The EUIPO therefore concluded that the sign in question is just one more variant of the many existing on the market that adopt simple decorative elements, alone or in combination with each other. In fact, the location of the sign as well as its representation do not deviate significantly from the standard or from the customs of the relevant industry.

 

Furthermore, the EUIPO pointed out that the infringement cases cited by the Applicant are not sufficient proof of the trade mark’s distinctiveness, as many products are copied without enjoying protection under trade marks or design rights.

 

Comment

Position trademarks in the footwear industry may enjoy protection where specific and distinctive elements are consistently placed on certain areas of a shoe. These trade marks help consumers recognize the origin of the product as well as to distinguish it from other products. However, position trade marks must meet stringent criteria for distinctiveness to ensure they do not represent common design practices. In a market saturated with decorative elements, the challenge lies in proving that a position trade mark is not just an ornament but a true indicator of a product’s origin.

This decision has broader implications for the footwear industry, as it addresses the balance between protecting distinctive elements and ensuring fair competition. By granting or denying the position trade mark, the EUIPO set a precedent for future applications, guiding footwear companies in their strategies and fostering a competitive yet fair market environment.

All the above said, recent rulings by the EUIPO on position trade marks in the fashion industry are not always converging (see The IPKat here  and here). Case law shows that the context is crucial when evaluating the distinctiveness of a position trade mark. More importantly, these cases underscore that context must be substantiated with strong evidence for the EUIPO's consideration.

 

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