For many years now it has been possible to register “unconventional” marks as registered UK and EU trade marks.

Such trade marks are described on Wikipedia as“marks which do not fall into the conventional set of marks (e.g. those consisting of letters, numerals, words, logos, pictures, symbols, or combinations of one or more of these elements), and therefore includes marks based on appearance, shape, sound, smell, taste and texture. Non-conventional trade marks may therefore be visible signs (e.g. colours, shapes, moving images, holograms, positions), or non-visible signs (e.g. sounds, scents, tastes, textures).”

However, experience has shown that registering such marks/signs as UK and EU trade marks is not an easy process. They are often found to be inherently non-distinctive. In other words, they fail to do the primary job of a trade mark, namely, to enable consumers to determine the trade source/origin of the goods/services in respect of which the mark/sign is used, so as to enable consumers to differentiate between such goods/services and those of other businesses.

In particular, case law has established that, whilst the legal criteria to be applied for assessing whether or not a mark/sign is inherently distinctive is the same, regardless of whether the mark/sign is a conventional or unconventional mark, account must be taken of the fact that average consumers are not in the habit of making assumptions about the trade origin of goods/services on the basis of certain unconventional trade marks – for example, the shape of goods or their packaging, the colours applied to goods or their packaging, or the appearance of the goods or some aspect of their appearance. Consumers typically rely on conventional marks, such as words and logos, to inform them as to who is the trade source for the goods/services in question.

When such a mark is held to be inherently non distinctive (and that will be the case for many unconventional marks, unless, as a minimum, they depart significantly from the norm or customs of the sector for the goods/services in question), the only way to enable the mark to achieve registered status is to prove that the mark has, through use, ‘acquired’ distinctive character. In other words, the brand owner has to take steps to educate the relevant public to see and regard the ‘unconventional’ mark as denoting the trade origin/source of the goods/services in question. However, extensive use of the mark, over many years, does not necessarily mean that the mark has come to be seen and regarded 'as a trade mark' by relevant average consumers (i.e. as indicating the commercial origin of the goods/services in question, which bear the mark). Mere use says nothing about how consumers view the mark in question.

Recent examples of the difficulty of registering such marks involve applications to register the patterns and treads used on the soles of footwear. Birkenstock has tried (and failed) to register such patterns as UK and EU trade marks. For example, in the UK, Birkenstock looked to register the following pattern as a UK trade mark for various footwear goods:

Both the UKIPO at first instance and the Appointed Person on appeal held that the mark was inherently non-distinctive. The relevant public would not give any trade origin significance to the mark, which would be seen and regarded as a mere aesthetic feature, namely a textured pattern found on the sole of an item of footwear. Moreover, the evidence showed that the said pattern did not depart significantly from other patterns routinely found on the soles of items of footwear. In the absence of any additional word or logo mark, the pattern alone would not enable consumers to ascertain the trade origin of the footwear in question.

Furthermore, the evidence filed, showing historic use of the pattern on the soles of Birkenstock’s footwear sold in the UK, did not prove that the pattern had ‘acquired’ distinctive character. The use did not show that the pattern was acting as a badge of origin, telling consumers who made or supplied the footwear. The ‘main brand’ did that – namely, the word mark BIRKENSTOCK, under which the footwear was sold. If Birkenstock had wanted to improve its chances of proving that the pattern had ‘acquired’ distinctive character then it needed to have marketed the goods in such a manner as to have educated relevant consumers to see and regard the pattern as indicating and conveying to them the trade source of the footwear.

In another recent case, Carrefour (the French retailer) applied to invalidate a 3rd party owned registered EU trade mark for the following pattern of a shoe tread:

Unsurprisingly, the EU trade mark authorities and the General Court held that the mark should never have been registered. The shoe tread was a mere variant of other shoe treads available in the marketplace. The mark was not inherently distinctive and nor had it, through use, acquired distinctive character. Consumers would perceive the shoe tread pattern as merely indicating the purpose and quality of the sole of the shoe. They would not regard it as indicating to them the commercial origin of the footwear bearing the shoe tread. The General Court even dismissed evidence from independent experts engaged in the footwear sector, who claimed the shoe tread was seen and regarded as indicating the trade mark owner’s goods, and it’s alone. It did so on the basis that the assertions they were making were not sufficiently credible, as they were not backed up with supporting data or evidence as to how average consumers perceived the mark and whether they saw the shoe tread as indicating to them the commercial origin of footwear bearing the shoe tread.

In conclusion, it is recognised that it can be difficult and expensive to produce evidence which shows that relevant consumers have, over time, been educated to see and regard an unconventional mark (such as the appearance, or the part appearance, of goods) as informing them as to the trade source of the goods in question. They are much more likely to look for a word or logo mark, which has been applied to the goods, or under which they are marketed to the public (e.g. the word mark BIRKENSTOCK). Be that as it may, without such evidence, you are (pardon the pun) treading on thin ice if you think that the UK and EU trade mark authorities are likely to grant you a registered trade mark…