Ornamental elements on footwear not used only for decorative purposes

In a series of decisions published on February 1 2011, the Federal Patent Court has dismissed rulings of the German Patent and Trademark Office (GPTO) in which the latter had refused to register the following figurative trademarks (Cases 27 W (pat) 279/09, 27 W (pat) 280/09, 27 W (pat) 281/09, 27 W (pat) 282/09 and 27 W (pat) 283/09).

The applicant sought to register these figurative trademarks in relation to "footwear". The Patent and Trademark Office refused to register the marks on the grounds that they were devoid of any distinctive character. The applicant appealed.

Before the court, the Patent and Trademark Office argued that the trademarks at issue were clearly perceived as decorative features, and not as an indication of origin of the goods.

The applicant argued, and the German Federal Patent Court agreed, that the trademarks would immediately and clearly be perceived as an indication of origin of the goods by the consumers.

The court pointed out that the applicant had applied for the registration of figurative trademarks, not position marks. Therefore, the applicant was allowed to place the trademarks anywhere on the goods - that is, not only on the outside of the shoes or on the packaging, but also on the inside of the shoes or the sole, among other places.

In the footwear industry, figurative and ornamental elements are used not only for decorative purposes, but also to identify a particular manufacturer. Consumers are used to these methods and are thus able to distinguish the different figurative elements and identify them with the corresponding manufacturer. Therefore, a trademark for footwear might be found to be distinctive, even though it consists only of a rather simple ornamental or geometric design.

The applicant argued that the trademarks applied for did not merely consist of an ornamental design, but had a special meaning. The marks all consisted of at least one letter (eg, 'N') and most of them included roman numerals (eg, IX). The court took this argument into consideration and referred to relevant case law under which single letters and numbers had been granted trademark protection.

The decision is in a line with German and EU decisions in which figurative trademarks consisting only of ornamental stripes or quilting were registered as trademarks.

Tanja Hogh Holub, Beiten Burkhardt, Munich

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