European Union: Trademark Registration – Archfit and Moon Boots
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In this article, we will discuss two recent decisions of the European Union (“EU“) which deal with trademark registration. These decisions are of interest to South Africa because EU trademark law is very similar to South African trademark law. EU decisions can certainly be persuasive in South Africa.
A VERBAL BRAND: ARCHFIT
The story back
The company that makes Skechers shoes has filed an EU trade mark application for the ARCHFIT mark in class 25 for “shoes”. This request was rejected for lack of distinctive character. The case went to court, which upheld the refusal, in other words, agreed that the word Archfit is descriptive of the goods and therefore not registrable. The decision is unremarkable, but the way the court took it is interesting – you could call it thorough, bordering on pedantry.
The court made the following remarks:
- The consumer to consider here is the average English-speaking consumer.
- This consumer will perceive the word arch as
“relating to the raised part of the foot formed by a curved section of bone”, rather than any “remote or nuanced meaning of the word”.
- The consumer, “confronted with the word arch designating the shoe… will not launch into the analysis… (and) will not hesitate to associate this word with the human foot”.
- Regarding the word fit, the consumer “will understand it as…the right shape and size for someone/something…(they)…exclude any other meaning…that fit has , for example the expression a fit of laughter or an epileptic fit.”
- Therefore, “the combination of the words arch and shape will be understood by (the consumer) as an indication that the shoe covered by the mark applied for is designed specifically to fit the user’s arch”.
As we said, thorough bordering on pedantry.
MOON BOOTS: A PRODUCT FORM BRAND
A fashion icon?
This case concerned the shape of the lunar boots. Moon boots are those big, ugly things people put on when they’re done skiing and want to sit down and drink some champagne. Lunar boots were inspired by the boots worn by Neil Armstrong and the handful of other astronauts who have been able to walk on the moon. The moon boot is very popular in Europe and Italy, it is apparently considered a fashion icon. Some 20 million pairs of moon boots have been sold, and the boot has even been displayed in museums, including the Louvre.
EU trade mark application
In 2011, the company Tecnica applied for the registration of its lunar boot shape as a 3D trademark in the EU in classes 18, 20 and 25 (these classes cover leather goods and footwear). Trademark registration granted. But a German company, Zeiteneu, applied for a partial declaration of invalidity for class 25 (the class that covers shoes). This request for partial cancellation was granted by the Cancellation Division of the EU Intellectual Property Office (EUIPO) and this decision was confirmed by the First Board of Appeal. A new appeal has been brought before the General Court.
The court’s decision
The General Court said what EU courts like to say in cases like this. He stated that the distinctiveness test for a product shape mark is the same as for a conventional mark such as a word or logo. But, the court said, consumer perception is different when it comes to marks that consist of the appearance of the product. The court said this:
“The average consumer is not used to presuming the origin of the good based on its shape or packaging in the absence of any graphic or verbal elements, and it could prove more difficult to establish distinctiveness in relation to such a three-dimensional mark than in relation to a word or figurative mark.”
This has the effect that “only a three-dimensional mark consisting of the appearance of the product itself, which deviates significantly from the norm or customs of the sector“will be recordable.
The court specified that the relevant public here would be the general public, consumers with an average level of attention. The general impression of the product here does not deviate significantly from the norms and practices of the après-ski footwear sector. The court clarified that “the shape of the contested mark corresponds to the common shape of après-ski boots, which generally consist of a high upper, often of light synthetic material, with soles and laces”.
The registration of the shoe mark has been cancelled.
The content of this article is intended to provide a general guide on the subject. Specialist advice should be sought regarding your particular situation.
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