In a recent decision, the Appointed Person, James Mellor QC, refused to uphold the validity of Birkenstock’s UK trade mark (No. UK00003070652) for the pattern on the soles of their shoes.

The original decision

The appeal was brought by Birkenstock following a successful application by the company Eurogloria s.l. (whom I was interested to learn make Plankton shoes/sandals) for a declaration of invalidity against Birkenstock’s UK trade mark registration for the sign depicted below, which was registered in respect of orthopaedic footwear in class 10 and footwear generally in class 25.

The invalidation action was based on Sections 3 (1)(b), (1)(c), (1)(d) and (2) of the TMA 1994. However it only succeeded in relation to the Section 3 (1)(b) for a lack of distinctiveness. Birkenstock tried to argue that the trade mark should remain on the register due to its acquired distinctiveness, but this claim was dismissed by the Hearing Officer.

The Appeal

Birkenstock sought to appeal the Hearing Officer’s original decision under three main headings of appeal.

These were:

  1. The Hearing officer committed seven errors in coming to her decision, the first six of which would render original decision unsound if found to be correct;
  2. If no individual error is substantial enough, the Hearing Officer came to a decision which no other reasonable Hearing Officer would have come to based on the evidence; and/or
  3. The Hearing Officer committed five errors in failing to find the Birkenstock sign had acquired distinctiveness.

The Appointed Person went through each of these main grounds of appeal (and the sub-grounds where applicable) and ultimately found none of them to have any significant weight. As a result, the original decision was upheld, with Birkenstock’s registration being declared invalid for a lack of distinctiveness, with them failing to meet the bar for acquired distinctiveness through use.

This appeal decision is not ground-breaking but it does provide a useful reminder on the requirements to obtain protection for figurative marks (2d) where the actual item is three-dimensional and is essentially part of the goods (i.e. it should depart significantly from the norms and customs of trade in order to fulfil the essential function of a trade mark).

Most interesting perhaps is the discussion around showing evidence of acquired distinctiveness for this sign,which Birkenstock argued was a sub-brand of their main Birkenstock brand. The Appointed Person provided a potentially helpful note to consider when attempting to show acquired distinctiveness of a sub-brand which is being used in conjunction with the main brand – namely whether the proprietor trusts the sub-brand to convey an origin message, and whether this is apparent in their marketing.

In the context of a divergence between UK and EU proceedings, it is also interesting to note that here the invalidity action succeeded on the basis of a lack of distinctiveness in the mark alone. The original ground based on the ‘shape objections’ (Section 3 (2) TMA 1994) was refused by the Hearing Officer. However, this is in contrast to the recent (second) opinion provided by the Attorney General in relation to the invalidation action against Louboutin’s EU trade mark registration for the colour red on the soles of their shoes, which succeeded on the basis of the ‘shape provision’ (Art. 7 (1)(e), 2017/1001 EC).