In a recent decision, the CJEU rejected an appeal from the German casual footwear manufacturer, Birkenstock in respect of its attempt to register a figurative trade mark for a pattern of waved, crossing lines as shown below (the "Mark"):
The Mark represents the pattern used on the soles of Birkenstock footwear.
Examination by the EUIPO
By way of background, the Mark was registered as an international registration ("IR") under Registration No. 1132742 with the EU as a designated territory. The IR covers Classes 10 (medical apparatus), 18 (leather and leather goods) and 25 (clothing).
The EUIPO refused protection on the basis that the Mark is devoid of any distinctive character, saying:
“Taken as a whole the mark applied for consists of no more than a combination of presentational features in the shape of a pattern. These features are not markedly different from other types of shapes/patterns applied for the goods at issue which are commonly used in trade, but is simply a variation on those shapes/patterns. It follows that the shape/pattern in question cannot be sufficiently distinguished from other patterns/shapes commonly used for these goods/services and it will not enable the relevant public immediately and with certainty to distinguish the applicant/holder's goods from those of another commercial origin”.
Birkenstock appealed and was unsuccessful at Board of Appeal level. The Board of Appeal ruled that the Mark would immediately be perceived as representing a surface pattern, rather than designating trade origin. It said that the average consumer does not usually perceive a sign which is indissociable from the appearance of the goods themselves as designating commercial origin. The Board of Appeal considered that the overall impression produced by the mark was "banal" and that that the surface pattern could be found on all the goods covered by the application and could simply fulfil an aesthetic and/or technical function. The overall impression, it said, does not depart significantly from what is normal in the sector.
Appeal to the General Court
Birkenstock appealed up to the General Court in 2014, arguing that the Board of Appeal board did not rely on the sign in its registered form (an image with a clearly delimited surface that is not indissociable from the shape of the goods).
The General Court overturned the decision and allowed registration in respect of "artificial limbs, eyes and teeth", "suture materials; suture materials for operations" in Class 10 and "animal skins, hides" in Class 18, saying that because the mark was unlikely to be used as a surface pattern in respect of such goods, it could function as a designation of origin. The decision was, however, upheld in respect of the other goods.
Appeal to the CJEU
In the appeal to the CJEU, Birkenstock claimed that the General Court had incorrectly used the criterion of a mere "possibility" that the Mark might be used as a surface pattern as a relevant factor in applying the case law relating to “indissociable” marks. It cited Deichmann v OHIM (Case C‑307/11) in which the General Court said that registration may only be refused where use as a surface pattern is "the most likely use" of the mark.
The CJEU did not agree with Birkenstock's arguments. It said that "In view of the intrinsic characteristics of the sign at issue, which is made up of a series of elements which are repeated regularly, and the nature of the goods covered, that sign is, in principle, intended to be affixed to the surface of those goods, as the Advocate General noted in point 77 of his Opinion. There is an inherent probability that a sign consisting of a repetitive sequence of elements will be used as a surface pattern and thus will be indissociable from the appearance of the goods concerned". The CJEU distinguished Deichmann on the basis that it did not concern a sign made up of a repetitive sequence of elements.
Birkenstock also argued that the General Court had incorrectly ignored the sectoral standards and usual practices for the goods concerned when examining the distinctiveness of the Mark. This was dismissed as inaccurate.
This decision serves as a useful reminder that in order to obtain protection for figurative two-dimensional marks where the actual application of the mark is part of the three-dimensional structure of the goods, such as surface decoration, the mark needs to significantly differ from what is common in the sector, in order to be considered to have inherent distinctiveness.
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