K-Swiss's five-stripe design held to lack distinctiveness


The Taipei High Administrative Court has upheld decisions by the Intellectual Property Office and the Ministry of Economic Affairs finding that K-Swiss Inc's five-stripe figurative trademark for shoes lacked distinctiveness and was thus not registrable (July 17 2008).

On May 4 2005 K-Swiss filed an application for the registration of a figurative trademark consisting of five vertical, parallel stripes for "boots, shoes, casual shoes, slippers and sports shoes" in Class 25 of the Nice Classification (Application 094021145). 
The office considered that the five-stripe design appearing on the upper of the shoes was used merely for decorative purposes, as such stripe designs are commonly used by other shoe manufacturers to decorate their shoes. 
In addition, the evidence of use submitted by K-Swiss showed that the five-stripe design was used together with the word mark K-SWISS and/or the figurative mark K-SWISS (and design). However, there was no evidence that the design was ever used on its own. Consequently, the office concluded that consumers would identify the source of K-Swiss's shoes based on the K-SWISS marks, rather than the five-stripe design. In addition, the office held that the evidence provided by K-Swiss was insufficient to prove that the five-stripe design:
  • was capable of distinguishing the sources of the goods; and
  • had acquired a secondary meaning in the minds of consumers. 
Therefore, the office dismissed the application of the grounds that the mark lacked distinctive character. 
K-Swiss appealed. The decision of the office was upheld by the Ministry of Economic Affairs, the authority in charge of administrative appeals. The Taipei High Administrative Court subsequently upheld the decision on the same grounds.
Joseph S Yang, Lee and Li Attorneys at Law, Taipei

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