Birkenstock's ‘patterned sole’ UK trade mark (No. UK3070652) was held invalid for lack of distinctiveness in a case that reaffirms the position held in Nestle v Cadbury. For further information on this case, read our Kit Kat article.

Sub-brand trade marks

In the UK, it is an established point of law that the association of a sign with a brand, is not sufficient to establish acquired distinctiveness. Brand owners are required to show that a ‘significant proportion of the relevant class of consumers perceive goods designated by the mark applied for as originating from a particular undertaking' (Floyd J at paragraph 102 - Nestle v Cadbury [2017] EWCA Civ 358).

It is important for brand owners to demonstrate that consumers place reliance on the mark in choosing or purchasing the goods. This can be demonstrated to the court by a ‘programme of education in [the brand owner’s] marketing for a suitable length of time‘. It was acknowledged in this decision that this could potentially be a costly exercise but it is necessary in order to meet the required standard of distinctiveness.

In the present case, it was not demonstrated by Birkenstock’s evidence that consumers rely exclusively on the pattern on the sole of the shoe to denote trade origin.

Background

Birkenstock filed a UK trade mark on 1 September 2014 in classes 10 and 25 for footwear with the description: ‘The mark consists of a pattern applied to the sole of footwear (especially sandals, clogs and slippers), as shown in the representation...’.

Eurogloria applied to invalidate the mark relying on the absolute grounds for refusal of registration pursuant to ss.3(1)(b), 3(1)(c), 3(1)(d) and 3(2) of the Trade Marks Act 1994. It succeeded in cancelling the mark for invalidity based on s.3(1)(c) as it was found to lack distinctiveness.

The significant points from the hearing officer’s decision are as follows:

  • The mark did not depart significantly from the norms or customs of the sector and was therefore devoid of any distinctive character.
  • No evidence was provided to show that a consumer would select a shoe on the basis of the pattern of the sole (or that they would pay attention to the pattern on the sole).
  • Birkenstock did not provide a single example of the goods being sold by reference to the sole mark.

The hearing officer decided that the mark was devoid of distinctive character, either inherent or acquired and Birkenstock appealed this decision.

The appeal

The three grounds of appeal were almost exclusively based on alleged errors in the interpretation of the evidence before the hearing officer. The appointed person in the appeal agreed entirely with the hearing officer’s decision and dismissed the appeal on all grounds. The decision to invalidate the mark was therefore upheld.

In the appeal decision, the appointed person raised an interesting proposition for brand owners relating to sub-brand trade marks:

‘It is a common and well-recognised problem that it is difficult to show that part of the appearance of the goods conveys an origin message when the ‘main brand’ conventionally conveys a very clear origin message. However, one way to show that a sub-brand does convey an origin message is to show that the proprietor has the confidence to rely on the sub-brand to convey an origin message in its marketing. In other words, a possible approach is to ask: does the proprietor trust the sub-brand to convey an origin message and is this apparent in the proprietor’s marketing?’

Proprietors should consider running marketing campaigns highlighting the sub-brand’s trade mark status as a 'badge of origin' on its own, rather than in conjunction with the brand name (as is usually the case).