Crocs shoes registered as 3D mark

In Israel, as elsewhere, the registration of three-dimensional (3D) marks remains a thorny issue. In the main, the matter has centred on the extent to which the registrar has been willing to accept evidence of acquired distinctiveness of a 3D mark as a basis for registration and, if so, whether the applicant has met its evidentiary burden of proof. The most recent instance of the challenge of demonstrating the registrability of a 3D mark is found in the decision by the adjudicator, rendered on January 15 2013, to accept the applications for registration of a 3D mark for footwear (In the matter of application Nos 212302 and 212303).

The two applications at issue were filed on June 22 2008 by Crocs Inc for virtually identical 3D applications in respect of footwear in Class 25 of the Nice Classification. The two-dimensional depiction of application No 212302 is as follows:

The application for application No 212303 is virtually the same, with a slight difference in the two-dimensional depiction of the mark.

Upon initial examination, the two applications were rejected as lacking distinctiveness, having particular regard to the fact that the mark for which registration was sought was in effect the goods themselves. Thereupon, the applicant filed a number of affidavits in support of its claim that the mark had acquired distinctiveness and served as a source indicator for its footwear. The applicant also submitted a survey in support of its claims. In addition, several ex parte hearings were held in connection with these submissions.

The adjudicator noted that the Supreme Court's jurisprudence has developed a number of factual considerations that, in the aggregate, could support the claim that a 3D mark has acquired distinctiveness, notably:

• the scope of use of the mark;
• the manner by which the mark is promoted; and
• the means taken by the applicant to create a mental connection on the part of the consumer with the mark as an indicator of source.

Against this factual backdrop, and in light of the extensive factual submissions made by the applicant, the adjudicator ruled that this evidence “unequivocally” supported the finding that “the shoes that were the subject of the applicant had become a means for identifying the applicant and distinguishing it from the rest of the businesses in the field”.

In accordance with Supreme Court jurisprudence, the adjudicator then considered whether the applications should nevertheless be rejected on the ground that the mark is functional (including aesthetically functional). With respect to traditional functionality, the adjudicator held that:

“while the design of the shoes that are the subject of the applications may be influenced to some degree by functional considerations (such as the use of apertures in the shoes that serve to ventilate the sole of the foot), nevertheless I do not believe that the design of the shoe in the instant situation played a substantial functional role.”

The adjudicator then devoted considerable attention to the issue of aesthetic functionality, which was described by the Supreme Court in the case of August Stork KH v Alfa Intuit Food Products Ltd (Civil appeal 11487/03, March 23 2008 (in Hebrew)) as an instance in which the consumer evinces a clear preference for the form of the goods for aesthetic reasons, rather than as indicating the source of the goods. The adjudicator surveyed the legal position of aesthetic functionality under US and EU jurisprudence, and noted that exceptions should be applied only in “unusual” situations. Considering the circumstances before her, the adjudicator ruled that she was not able to determine “to the level of certainty required that the unique design of the shoes that are the subject of the application is the sole factor for their purchase by the Israel consumer”. Accordingly, she rejected that aesthetic functionality applied with respect to the instant applications. Based on the foregoing, the adjudicator found that the applications should be accepted for publication.

This decision shows that the Israel Registry is willing to grant registration of a 3D mark if the requisite evidentiary showing is made out, primarily by means of affidavits and expert opinions, but that the evidentiary bar is a demanding one.

Neil Wilkof, Dr Eyal Bressler & Co, Ramat-Gan