K-Swiss 5-strip sign
The General Court of the European Union (on appeal from the Board of Appeal at OHIM) has decided that the 5-stripe sign of K-Swiss, registered for footwear, is invalid as being devoid of distinctive character. These stripes were depicted as shown on the side of a shoe (in a not dissimilar way to the 3 stripes of Adidas).
Decision of the General Court
Even though stripes (and other geometric patterns) on the sides of shoes, particularly sport or leisure shoes, are not uncommon and recognised by consumers, the court held that:
- consumers do not recognise such patterns as indicative of commercial origin (as opposed to merely being decorative), absent evidence of very substantial use;
- a design applied to the surface of a product must be capable of being understood (as an indication of origin) without the product’s inherent qualities being perceived simultaneously;
- for products such as these, signs (which are part of the products) must depart significantly from the norm or customs of the sector (and this was not the case here).
This decision confirms a recent trend both at the General Court and at OHIM of making it more difficult to register marks such as these. This trend does seem to set a high hurdle for trade mark owners and it would be interesting to see what the Court of Justice of the European Union says about this case (if there is an appeal). Until then, this trend is likely to continue and applicants for similar marks will need to produce substantial evidence not only of actual acquired distinctiveness but also recognition by consumers that the mark has been used as, and has become recognised as, indicative of commercial origin.