Wrong side of the line – more absolute grounds rejections for stripe marks of K-Swiss Inc and Shoe Branding Europe BVBA
We’ve devoted a lot of time on IP Whiteboard to position marks, particularly in the fashion sector.
Recently, a number of decisions have come down rejecting stripe marks, and it is worth briefly having a look at the arguments and the reasoning and contrasting them against some earlier decisions. The “skinny” is that there is a relatively consistent line (sorry) of cases rejecting stripe marks on a prima facie basis, though obviously it is possible to register these on proof of acquired distinctiveness. adidas has been successful in the EU, and in many countries throughout the world including Australia, in registering its three-stripe mark on footwear and clothing and in enforcing that mark (see in Australia here).
In case T-3/15, K-Swiss appealed against the decision of the 2nd Board of Appeal rejecting its 5 stripe CTM (below) in respect of “athletic shoes, namely tennis shoes, basketball shoes, cross-country and jogging shoes and casual shoes” in class 25.
The written description for the mark states that “the trade mark consists of two sets of five parallel stripes, each set of five stripes extending downward from the central, frontal, portion of the shoe upper to the sole of the shoe”.
In finding that the mark lacked distinctiveness, OHIM’s 2nd Board reasoned that:
- the mark exhibits “no arbitrary feature”;
- “there are few shapes more simple than a stripe”;
- “the mere repetition of a thick line does not decisively alter the banal impression of a mark as a whole”;
- “the mark shows no structure, feature or any contrasting elements which might serve to generate an element of distinctiveness”;
- “the stripes appear as little more than a generic, and rather banal, embellishment”.
As to the argument of K-Swiss that consumers pay special attention to the markings displayed on a shoe, the 2nd Board considered that (whilst this might hold true for “particularly expensive or stylish footwear”) there was no evidence that this applied across the entire sector.
The General Court dismissed K-Swiss’ appeal. There was a widespread practice of placing a stripe pattern on sports shoes, and because of its banal character this mark did not sufficiently depart from such uses to act as an indicator of origin. Simply placing the stripes on the side of the shoe would not change this.
K-Swiss argued that the customs in the market should be taken into account. It argued that consumers would pay particular attention to shapes placed on the side of the shoe. K-Swiss provided information to this effect. However, the General Court considered that this information did not make it possible to determine whether consumers would automatically link the sign on the side of a sports shoe with a particular manufacturer. Even if simple geometrical shapes made it possible for a consumer to link that product to a specific manufacturer, that had less to do with positioning, and more to do with intensive use made on the market. The earlier case law that K-Swiss referred to did not assist.
It is worth finally noting that policy clearly played a role in the General Court’s reasoning:
“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”
[For completeness, an invalidity application against an earlier CTM registration owned by K-Swiss for a 5-stripe mark was upheld by the General Court in Case T85/13.]
Shoe Branding Europe BVBA
In cases T-63/15 and T-64/15 handed down on 15 December, Shoe Branding Europe BVBA has had its Community Trade Mark applications for the stripe marks below rejected on the basis that they lacked sufficient distinctiveness:
The decisions are short, and follow the well-worn and predictable path of (most!) General Court decisions. The court recites the language of article 7(1)(b) of the CTM Regulation, and the aim which it serves (namely to perform the essential function, which is to distinguish the products sold by a given undertaking from those of other undertakings). It then goes on to agree with the 5th Board of Appeal that the patterns concerned were “very simple and ordinary” (the shirt mark) and “extremely simple” (the pants mark) and thus lacked distinctive character on that basis alone. Further, the patterns would not gain distinctiveness by virtue of being affixed to a specific part of the shirt or pants (on an angle, in the case of the latter). They could not be distinguished from other purely decorative patterns used on these types of goods. The decisions of the 5th Board were thus soundly based.
The Applicant on appeal referred to evidence of the use of simple geometric shapes by sportswear manufacturers as branding. The court took the view that the distinctive value of those signs owed more to intensive advertising rather than the simplicity and positioning of the signs. The court also considered the matter as an issue of policy using virtually identical language to that used in the K-Swiss case as noted above.
The Applicant also argued that the Boards had ignored and departed from earlier decision-making practice. The answer here (as ever) from the court was that the examination must be undertaken and a view formed in each individual case, taking account the specific facts.
The appeals were rejected.
Decision-making as to these particular types of marks is fact-specific. The marks in these three cases here were considered to fall on the wrong side of the line. The reasoning of the General Court in each case was quite similar.
The rejections follow a similar line of reasoning to the earlier rejection of Keds’ “side-by-side” two stripe mark by the 2nd Board, reported here last year, that were considered merely as “another common stripe design affixed to a running shoe”.
In each case the position taken was that these stripes / lines were common and would not be seen as source-specific.
On the other hand, in the Gamp case (first noted here), a more lenient approach was taken. The base-line assumption on the part of the 2nd Board in Gamp was that “the public have become accustomed to identifying a particular brand of running shoe or sports shirt based only on a distinctive pattern or design”. However, in Gamp, the 2nd Board did note that the mark at issue was “a relatively complex structure comprising two curved sides with a bevelled pointed top” (perhaps at the risk of over-statement) and so was not merely a “banal tag”.
In any case, whilst it is always useful to survey the landscape of similarly themed earlier registered marks (and related case law), arguments as to past treatment of third party marks are generally doomed to fail before the General Court and CJEU.
Absent some departure from the norm, evidence of distinctiveness acquired through use and promotion is likely to be needed. A brand owner with this strategy in mind may wish to pursue national registrations in the EU in the hope of more easily being able to demonstrate factual distinctiveness on a country-by-country basis as opposed to the higher threshold of EU-wide distinctiveness needed in respect of a CTM (for more detail on the merit of national filings alongside CTMs, see our note here).
It appears then that stripes might form a category of their own before Europe’s courts, with other “distinctive” patterns or designs given separate consideration (which tends to beg the question). There are of course cases at the other end of the spectrum in which (wordless) logos used on clothing have been successfully registered and enforced, such as the battle of the British bird logos in the Jack Wills v House of Fraser case (noted here).