• Birkenstock unsuccessful in registering its shoe sole pattern as a trade mark
  • Appeal to the Court of Justice of the European Union
  • What is the test for determining whether a sign comprising a repeating motif lacks distinctive character?

What's it about?

Birkenstock registered an international trade mark consisting of a square containing a series of crossing wavy lines. The European Union Intellectual Property Office (EUIPO) refused to grant a corresponding EU Trade Mark on the grounds that it lacked distinctive character. Under Article 7(1)(b) of the EU Trade Mark Regulations ((EC) 207/2009), marks which are devoid of any distinctive character may not be registered.

Birkenstock appealed this refusal unsuccessfully both to the EUIPO Board of Appeal and then to the EU General Court. This case concerns Birkenstock's further appeal to the Court of Justice of the European Union (CJEU).

Why does it matter?

The pattern which Birkenstock sought to register is used mainly on the soles of its famous footwear. The key issue was whether this pattern is unable to be dissociated from the goods themselves, in which case this would render it a mere surface pattern and therefore insufficiently distinct to be registrable as a trade mark. In deciding this issue, the CJEU (rejecting Birkenstock's appeal and upholding the EU General Court's decision) found that there was a probability, inherent in that kind of repeating motif design, that it would be used as a surface pattern.

Birkenstock had tried to argue that the appropriate test for this kind of sign was whether the "most likely use" of the sign was a surface pattern. The CJEU rejected this approach, stating that what matters was whether the sign was unable to be dissociated from the appearance of the product.

Now what?

This case further strengthens the existing position, which is that brand owners are likely to struggle to register signs which will mainly be used as surface decoration, and where the type and use of the relevant pattern is usual or commonplace for the product in question.

Birkenstock Sales GmbH v EUIPO Case C-26/17 P