Following hot on the heels (no pun intended!) of the decision of the Federal Court of Australia in adidas v Pacific Brands in Australia last year (in which KWM acted for adidas, here), position and logo marks in the fashion space are really hitting the headlines again in 2014.
Any shoe lover will have noticed an inconsistency (I’m being very polite here) in considering whether a device on a shoe functions as a trade mark, or whether it is seen as mere decoration.
And don’t get me started on jeans pocket stitching marks. Don’t go there.
Now we have a further decision from OHIM’s Board of Appeal (Case R 798/2013-2, 20 January 2014), which has rejected Ked’s CTM application for the side-by-side two stripe mark below.
The description reads “the mark consists of two adjoining side by side parallel stripes of the same width placed near the toe on the side of the shoe (foxing part) with the upper portion of the diagonal stripes extending toward the front of the shoe and the lower portion extending to the rear of the shoe. The overall shape of the shoe as such does not form part of the mark and for this reason the shoe is presented using dotted lines that do not form part of the mark”.
The examiner at OHIM considered that “the use of slanted slipes on training shoes, be it one, two, three or more, is so widespread … that it would be impossible for the relevant consumer to see such a feature as anything more than another common stripe design affixed to a running shoe”. [The examiner clearly was not aware of adidas …]
Keds appealed, arguing that the mark is affixed to the foxing-like band of the shoe, which is anything but common, and referred to evidence showing that no one else on the market used a similar marking.
The 2nd Board of Appeal took side with the examiner. It took the view that it was allowable for the examiner to take into account personal experience from the marketing of general consumer goods, without needing to give examples. Thus it was acceptable to refer to common knowledge around the use of slanted stripes, at least on the upper part of a shoe and also on the foxing-like band. It was thus considered that the attention given to such signs would not be high.
Even if the public were attentive to the different aesthetic details of a product, this does not automatically mean that they would perceive this sign as having a branding role.
Considering the particular mark at issue, it had nothing which might be considered “eye-catching” or which would be capable of attracting the average consumer’s attention. It would instead be seen as a banal decorative element with no trade mark significance.
This is an interesting decision from the very same Board that in August 2013 accepted Gamp’s Shield device below as being inherently distinctive (discussed in our earlier NYDJ note here).
In Gamp, the 2nd Board admitted that the Shield device was not high in distinctive character, and was not “abundant in creative effects” or particularly original. Nonetheless, it had the required minimum degree of distinctive character. Part of the basis for this was that it was common knowledge 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”.
It is disappointing that the 2nd Board did not reiterate its finding in Keds, and instead distinguished consumer perceptions of stripes on the one hand as against shields on the other. It did not need to make this distinction in order to find that the mark did not have sufficient distinctive character.
A move towards consistency in the treatment of how such signs are perceived by consumers would be warmly welcomed.
So a case of one step forward, and then one step back.
What about Australia and New Zealand?
Keds does not own Australian or New Zealand trade mark registrations for this same mark. However, there are many footwear markings registered as trade marks in Australia, including the adidas 3-stripe mark, the K-Swiss 5-stripe mark, and various stripe marks owned by Vans (a version of which was recently rejected by OHIM’s 5th Board of Appeal – see our scorecard below).
Australia’s law generally provides an easier basis with which to pursue registration of these types of marks, if it is considered that the mark has some level of inherent distinctiveness under section 41(4) (the provision under which marks of this nature are commonly considered [this was previously section 41(5)). This provision allows consideration of a combination of factors including a level of inherent distinctiveness, use/proposed use and any other circumstances. This threshold is generally far lower than the requirement for factual distinctiveness under article 7(3) of the CTM Regulation (though this depends on the level of inherent distinctiveness that the mark is considered to have).
In the enforcement context, last year’s decision of the Federal Court in adidas v Pacific Brands (here) established that the respondent’s use of 4 stripes on the side of footwear amounted to use of those markings “as a trade mark” and, in certain cases, infringed adidas’ 3-stripe trade marks. It is clear then that the Australian courts recognise that footwear devices can and, in many cases, do function as trade marks. The validity of adidas’ 3-stripe marks was not challenged.
New Zealand’s law on inherent distinctiveness should be the same as that of the EU, given the similarity between the respective provisions. On acquired distinctiveness, the provision is slightly different to its EU counterpart as New Zealand’s section 18(2) allows consideration not only of use but also of “any other circumstances” (from before the priority date).