European Union General Court, 9 November 2016, Case T-579/14, Birkenstock Sales GmbH v EUIPO

By its judgement of 9 November 2016 the European Union General Court confirmed the refusal of protection of the international trademark registration of the Birkenstock sole pattern presenting wavy lines crisscrossing at right angles in a repetitive sequence.

The GC agreed with the assessment of the EUIPO Board of Appeal that the trade mark in question was devoid of any distinctive character in respect of orthopaedic shoes and parts therefor.

The GC found that the repetitive sequence could extend infinitely in all four directions of the square and therefore be applied to any two- or three-dimensional surface.

Thus the sign at issue would be perceived immediately as representing a surface pattern.

It observed that the case-law relating to signs that are indissociable from the appearance of the products should be applicable in the case at issue.

Such case-law stated that as the average consumers do not usually presume the commercial origin of goods on the basis of the signs that are indissociable from the goods themselves, those signs will have distinctive character only if they depart signicantly from the sectorial standards or usual practices (judgments of 12 January 2006, Deutsche SiSi-Werke v OHIM, C‑173/04 P, EU:C:2006:20, paragraph 31, and 22 June 2006, Storck v OHIM, C‑25/05 P, EU:C:2006:422, paragraph 28).

In the judgment of 19 September 2012, Fraas v OHIM, “Tartan pattern in dark grey, light grey, black, beige, dark red and light red” (T‑50/11) the Court already applied such a test  in the case of a figurative mark consisting of a part of the shape of the product that it represents, inasmuch as the relevant public will immediately and without further thought perceive it as a representation of a particularly interesting or attractive detail of the product in question, rather than as an indication of its commercial origin.

According to such case law, the court concluded that it was well known that the surfaces of goods or their packaging are decorated with patterns for a variety of reasons, including enhancing their aesthetic appearance and/or for technical reasons.

The decision has been appealed before the ECJ (C-26/17 P).

This is not the first case addressing whether an outsole is capable of functioning as a trademark. Many will remenber that Louboutin, the renowned footwear brand based in Paris, registered as a trademark the bright-red lacquered sole featuring its luxury footwear and filed a trademark infringement lawsuit against Yves Saint Laurent, Zara and other competitors, in a number of countries, including Swiss, France, Germany, Belgium and the United States. In these cases, however, the limits of the protection granted to the colour red contained in a trademark were at issue, with very different outcomes.

Just for mention the most significant findings, the U.S. Second Circuit Court of Appeals (No. 11-3303, 2013) found that the Red Sole Trademark had acquired secondary meaning, but only to the extent the sole did contrast with the upper part of a shoe (i.e., not in case of monochromatic red shoes). On the contrary, The Swiss Federal Administrative Court ruled that the red soles are merely a decoration, ineligible for trademark protection (decision B-6219/2013) and the French Supreme Court (may 30, 2012) stated the 3D mark could not be registered because the shape lacks distinctiveness and is imposed by its function.

Jacopo Ciani