EGC decides 10-year battle – two stripes on shoe

The question, whether two stripes on the side of a shoe have a distinctive character or can lead to the invalidity of a trademark was subjected in the case of 4 May 2022. But how did the European General Court (EGC) decide the case and based on which criteria?
 

I. Background of the case

On 6 November 2002, Munich, SL filed an application for a European figurative mark (EUTM Nr. 002923852) with EUIPO (see picture above). However, this led to an application for declaration of the invalidity of the trademark by Deichmann SE. Deichmann SE claimed that the application does not comply with Article 7 (1) (b) of the EU Trademark Regulation (EUTMR), which forbids the registration of trademarks which are devoid of any distinctive character. After the appeal was rejected by the EUIPO, Deichmann filed an appeal against the decision of the Cancellation Division, which was also without success. According to the Cancellation Division, the intervener had convincingly demonstrated, “that many undertakings used relatively simple patterns on the side of the shoe to indicate the commercial origin of shoes”.

II. Judgement of the European General Court (Sixth Chamber)

Deichmann filed an appeal against the decision at the EGC and claimed, that the EUIPO was incorrect with assuming that the average consumer perceives simple patterns on the side of sports shoes as inherently distinctive signs. However, the EGC found that the absolute ground for refusal must be interpreted with respect to the general interest underlying it. In this case, the general interest relies on the essential function of a trademark: To guarantee the identity of the origin of the marked product to the consumer by enabling him or her to differentiate them from other products of another origin. In addition, there are two relevant criteria to consider, when deciding whether a trademark is distinctive or not:

1. The goods or services

2. The relevant public´s perception of the mark (meaning average consumers being well informed and reasonably observant and circumspect of the category of the goods and services)

Furthermore, the appellant must present the facts which cause the validity. In this case, the appellant submitted evidence that several registered designs with similar stripes on the side of sports shoes exist. According to the EGC, this does not lead to the conclusion of an actual use on the market and is therefore no evidence capable of proving that the relevant public perceives the contested mark as not having distinctive character.

III. Conclusion

Therefore, the EGC dismissed the action with the judgement of 4 May 2022. As a result, two stripes on the side of a shoe are distinctive which means that the mark can stay registered.

To read the whole case, please click here.