Modernisation of trade mark law in the USA
The Trademark Modernization Act of 2020 will be implemented in the USA in December 2021.
The judgment in the case of T-3/15 by the General Court upheld the original decision by OHIM that the trade mark below lacks any distinctive character.
The Californian-based firm K-Swiss Inc. filed a European Community trade mark application for this trade mark for the goods “athletic shoes, namely tennis shoes, basketball shoes, cross-country and jogging shoes and casual shoes”, in Class 25.
The OHIM Examiner and also OHIM’s Second Board of Appeal refused registration of the trade mark, ruling that the five parallel stripes on the shoe “do not have any original feature and are nothing more than a rather banal generic embellishment in view of the widespread practice of placing a stripe pattern on sports shoes”.
Additionally, with regard to the relevant public’s attention, OHIM’s Board of Appeal held that while it is possible that the consumer will be more attentive to the choice of branded goods, in particular when he or she buys particularly expensive shoes, such an approach on the part of the consumer cannot be presumed without evidence with regard to all goods in that sector; that the evidence provided by K-Swiss does not demonstrate that it is the usual practice of OHIM to register, as a mark for sports shoes, designs consisting only of stripes; and also that the legality of the decisions of the Boards of Appeal must be assessed on the basis of Regulation No 207/2009, as interpreted by the Courts of the European Union, and not on the basis of a previous decision-making practice of OHIM.
K-Swiss raised two pleas in law in support of its claim for annulment, the first that the trade mark had distinctive character, while the second alleges that that the Board of Appeal ought to have supplemented the evidence at its disposal.
For a trade mark to possess distinctive character, the mark in question must make it possible to identify the product in respect of which registration has been applied for as originating from a particular undertaking, and distinguish that product from those of other undertakings.
The Court confirmed the Board of Appeal’s verdict that the stripes are nothing more than a rather banal generic embellishment, and that a simple and banal design of a juxtaposition of five sloping, parallel stripes, the size of which varies so as to correspond to that of the side of the shoe, is unlikely to acquire distinctive character simply because it is placed on the side of the shoe. It stated that, as K-Swiss had acknowledged, many manufacturers of sports shoes or casual shoes use relatively simple patterns of lines or stripes which they also place on the side of the shoe. Additionally, that the sign in question extends to the full height of the side of the shoe confirms its lack of originality, as the variation in the size of the stripes appears to be naturally determined by the actual shape of the object on which those stripes are placed.
This being the case, the design cannot immediately be considered as constituting an indication of the commercial origin of the goods concerned.
K-Swiss argued that the practice of placing their mark on the side of shoes is common amongst manufacturers of sports shoes, and because of this, the average consumer will pay particular attention to the shapes placed there and will naturally consider them to be trade marks.
The Court responded by saying that although this may be the case, this does not make it possible to determine that the average consumer has learned to establish an automatic link between the sign featuring on the side of a sports shoe and a particular manufacturer, and that that consumer will therefore necessarily perceive any geometric shape placed on the side of a sports shoe as being a trade mark. The Court also stated that even if it were accepted that the average consumer pays particularly close attention to the shapes placed on the side of the shoe, to the point that that consumer considers that those shapes generally constitute trade marks, K-Swiss had not provided sufficient evidence to establish that, in view of the banal nature of the sign at issue, the average consumer would consider that sign to be an indication of the origin of the goods at issue, and not a mere decorative element.
Also, to accept that every geometric shape, even the most simple, has distinctive character because it features on the side of a sports shoe would make it possible for some manufacturers to appropriate simple, and above all decorative, shapes, which must remain accessible to everyone, with the exception of those situations in which the distinctive character of the sign has been acquired by use.
The Court also rejected the second plea, stating that the fact remains that “if an applicant claims that a trade mark applied for is distinctive, despite OHIM’s analysis, it is for that applicant to provide specific and substantiated information to show that the trade mark applied for has an intrinsic distinctive character”.
The trade mark therefore remains unregistered in Europe.
If you need any advice on trade marks, or any other aspect of your intellectual property, please contact one of our advisors.