K-Swiss' five-stripe mark held to be invalid

In K-Swiss Inc v Office for Harmonisation in the Internal Market (OHIM) (Case T-85/13, June 13 2014), the General Court has rendered its judgment in the proceedings between K-Swiss Inc (as applicant), OHIM (as defendant) and Künzli SwissSchuh AG (as the other party to the proceedings before the Board of Appeal of OHIM).

According to the decision, a design with five stripes placed on the side of shoes is devoid of an intrinsic distinctive character: the average consumer does not perceive it as a sign identifying the commercial origin of the products that it covers, because, unless the mark holder proves the contrary, it is indistinguishable from the appearance of the products themselves and does not depart significantly from the norms or customs of the sector. In particular, with respect to the sports and leisure shoes sector, a basic figurative element placed on the side of shoes is something common, unless the sign, through intensive use, has become fixed in consumers’ minds as an identifying feature.

The dispute in question arose from the application filed by K-Swiss on December 8 2005 for registration of a figurative sign consisting of a two-dimensional representation of the shape of a shoe showing five parallel stripes on its side, on the basis of the Community Trademark Regulation (40/94), now the Community Trademark Regulation (207/2009):

The mark was registered for "footwear" in Class 25 of the Nice Classification.

On February 24 2009 Künzli filed an application for a declaration of invalidity concerning all the products protected under the registration of the trademark, pursuant to Article 52(1)(a) and Article 7(1)(b) of the regulation.

On January 11 2011 the Cancellation Division granted the application for a declaration of invalidity, holding that the contested trademark did not fulfil the function of indicating the commercial origin of the product; the consumer would accord it only fleeting attention, perceiving the five stripes as a technical means or as a pure embellishment of a common nature.

On January 20 2011 the applicant filed an appeal with OHIM. The Second Board of Appeal confirmed the contested decision, concluding that, taking into account the perception of an average consumer of the general public, whom the products were intended for, the sign at issue did not have the required minimum degree of distinctive character.

Subsequently, the applicant appealed to the General Court, alleging breach of Article 7(1)(b) of the regulation.

Confirming the reasoning of the board, the court relied on well-established case law whereby the average consumer is not accustomed to making assumptions as to the commercial origin of products on the basis of signs which are indistinguishable from the appearance of the products themselves; therefore, such signs (irrespective of their classification as figurative, three-dimensional or other) have distinctive character only if they depart significantly from the norms or customs of the sector. In this regard, the burden to provide specific and substantiated evidence of any intrinsic distinctive character is on the trademark owner/applicant, because it is much better placed to do so, in the light of its thorough knowledge of the market.

According to the General Court (and the Board of Appeal), the mark at issue, given its specific shape, could not be dissociated from the products it designated (shoes). Moreover, the applicant had failed to provide the evidence required to demonstrate that the sign in question, applied to the external surface of shoes, could be apprehended without the intrinsic characteristics of those shoes being simultaneously perceived, so that the sign could be easily and instantly recalled by the relevant public as distinctive.

In particular, focusing on the sports and leisure shoes sector, the court (like the board) observed that using basic geometrical patterns as decorative elements on the side of shoes is a common practice; therefore, consumers would not establish a link between any sign placed on the side of a shoe and a particular manufacturer, unless that sign has become fixed in their minds through its intensive use as identifier of commercial origin. Consequently, five stripes inserted in the design of a shoe, placed on the surface of a product where those who buy it expect to find a basic figurative element, appear banal and common.

The fact that the shoe was represented using a dotted line did not render the whole sign distinctive, since this was a minor detail which failed to draw the consumer’s attention away from the fact that the sign itself represented a shoe; neither did the limited number of stripes used amount to an identifying element. 

Moreover, the lack of distinctive character could not be called into question by the argument that the mark at issue was in fact a ‘position mark’, namely that it should be regarded as restricted to the five parallel stripes intended to be placed in a particular position on the product (on the side of the shoe). The court first noted that the trademark in question was presented by the applicant in its application as a figurative mark (a two-dimensional representation of a side-view of a shoe), instead of a position mark. Second, the court found that, even if the mark were limited to the five parallel stripes to be positioned on the side of shoes, it could not be dissociated from the appearance of the products it designated and did not depart significantly from the standard designs that are shown on the side of this kind of products.    

In the light of the above, the court rejected all the complaints raised by the applicant.

Margherita Barié and Pietro Pouché, Carnelutti Studio Legale Associato, Milan