Most companies only register their trading names and logos as trade marks. However, today's consumers increasingly recognise a variety of other signs as indicating that the goods come from a particular company. For example, if you see a pair of high heeled shoes with a red sole this is immediately reminiscent of Christian Louboutin. If you see a chocolate bar in a dark purple wrapper you will probably assume it's made by Cadbury but if it's cat food, you are likely to think it's Whiskas. In fact, it is possible to register trade marks for signs as diverse as colours, shapes, noises and even smells. Nevertheless, as many brands have found, registering such trade marks is far from easy. In most cases, such signs can only be registered if they have acquired distinctiveness through extensive use.
Austrian shoe company, Think Schuhwerk, applied to register "shoes with laces with red tips on the ends of shoelaces" as a Community Trade Mark (CTM) in the form shown below. The application was refused by the CTM Registry (OHIM) and by the OHIM Board of Appeal on the basis that the impression created by shoelaces with red tips does not differ greatly from the normal patterns of lace shoes.
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THE GENERAL COURT DECISION
Following the decision of the OHIM Board of Appeal, Think Schuhwerk appealed to the General Court arguing that the red tips themselves were distinctive of their shoes, even if the shoe as a whole depicted in the trade mark application was a generic shoe. The company also argued that shoes sold with red tipped shoelaces and different coloured laces are rare and therefore distinctive.
The General Court held that the mark should be refused registration because:
- The red tips on the shoelaces were not independent of the appearance of the whole shoe, and therefore merged with the overall appearance,
- The argument that the red tipped shoe laces were novel and original failed because novelty and originality were not decisive criteria for assessing its distinctiveness as a trade mark, and
- Crucially, the company provided no evidence to suggest that the colour of parts of a shoe lace is perceived by relevant consumers as an indication of the brand of the shoes.
This decision underlines the difficulties in registering unconventional trade marks, such as shapes, colours, and other figurative signs which appear in a particular position on the products in question. In most cases it will be necessary to file evidence of use in order to secure a registration, as the Trade Mark Registry will wish to see evidence that your consumers have been educated into recognising the particular feature as identifying your business.
We recommend that you:
- Keep a file with dated examples of your use, such as press clippings, catalogues, invoices for orders and brochures. You may already do this to an extent in conjunction with a press agency. If a particular feature of your product, such as its shape, colour or other figurative feature becomes associated with your business, this evidence will be useful in securing a trade mark registration.
- If your customers already refer to a particular feature of your products, for example "the red soled shoes", then keep a log of these references. You should also seek legal advice on the forms of protection that may be appropriate.
- If the design or visual appearance of your product creates a different overall impression on consumers from other designs in the marketplace, then you should also seek advice on whether registered design protection may be available.