Do you consider this to be a trade mark? A sign capable of distinguishing goods and indicating origin? Birkenstock though yes but the European Court of Justice said no. Why? Because it lacked distinctive character.

The final battle for registering the pattern of the Birkenstock soles in the European Union was lost on the 13th of September 2018, when the Court of Justice issued its decision. The mark depicted above was found to lack distinctiveness in relation to the goods in question, which included footwear, bags and clothing. This comes after Birkenstock had their same mark invalidated in the UK this year, for the same reason. I guess we wouldn’t want to be in their shoes at this time!

With this decision, we learn yet again that the Courts are not willing to allow registration for signs that are more designs than trade marks, for the simple reason that the public doesn’t perceive them as indicators of origin. In other words, consumers would think patterns or surface decorations were more likely chosen for technical or aesthetic reasons, rather than to indicate the source of the goods.

Such marks could have a chance at trade mark protection if they departed significantly from the sectoral standards or usual practices, i.e. if they stood out from the ‘banal’. However, the Court found that Birkenstock’s mark failed to do so, since it wasn’t more than ‘a simple combination of wavy lines crisscrossing repeatedly’. In essence, the judges were not persuaded that this was more than Birkenstock ultimately trying to get the extended benefits of trade mark protection for the sole appearance… of their sole.

Finally, the main conclusion is that simple patterns and surface decorations are not strong enough to act as trade marks. Brand owners should direct their efforts towards coming up with creative signs that depart enough from the norm or, alternatively, they should start investing in acquiring distinctiveness.