Does notoriety ensure the distinctive character of a brand? Not necessarily

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The General Court of the European Union (CGE) has issued its decision on the invalidity proceedings brought against the famous trademark registration Moon Boot 3-D. The GC has taken a close look at the distinctiveness of 3D panels, providing new guidance on the subject.

Background

Technica Group SpA held a trademark registration for the 3D sign below depicting the iconic Moon Boot footwear for Class 18, 20 and 25 products (To mark). The iconic Moon Boot shoes, created by Giancarlo Zanatta, were launched in the 1970s and have been popular ever since.

In 2017, Zeitneu GmbH filed an invalidity action against the trademark and the EUIPO Cancellation Division declared the trademark partially invalid in class 25 (e.g. shoes). The appeal filed by Technica Group SpA was dismissed by the EUIPO Board of Appeal, which decided that the sign did not deviate significantly from the après-ski market and, as such, the Mark was devoid of any distinctive character. Technica Group SpA then turned to the EGC.

The decision of the EGC

The EGC held that it is a well-established principle that there should be no distinction between the assessment of the distinctiveness of conventional and less conventional marks, such as 3D marks. However, the average consumer’s perception is not necessarily the same, as the average consumer is not used to making assumptions about the origin of products based on their shape alone. Therefore, only 3D marks which deviate significantly from the standard of the sector concerned will have a distinctive character.

With respect to the Mark, the various characteristics of the product pointed out by Technica Group SpA are only decorative or technical details and do not contribute to the general appearance of the product and should simply be considered as after-shoe variants of ski. Therefore, the Mark does not differ significantly from other forms on the market.

Take away food

There is no doubt that the ECG’s decision caused some disappointment, especially since the Moon Boot shoes had previously obtained copyright protection. This case shows that the protection of non-traditional marks with a reputation is not guaranteed. Indeed, an application can be refused or invalidated, even when similar products available on the market have been inspired by the mark itself. Thus, obtaining trademark registration for 3D marks is still not an obvious path to protection and trademark owners should consider that a strong IP enforcement strategy involves ( (i) to prevent a form from becoming generic over time, and (ii) to rely on more than one intellectual property right.

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