Case Review – T-3/15 K-Swiss v OHIM (Représentation de bandes parallèles sur une chaussure) – 4 December 2015 (Decision)

Background

K-Swiss sought registration of the five stripe mark (see blog image) under the CTM designation of International Registration No. 932758 in Class 25 (“athletic shoes, namely tennis shoes, basketball shoes, cross-country and jogging shoes and casual shoes” as of 8 October 2013) on 23 May 2013.

The designation was refused protection on 4 March 2014 under Article 7(1)(b) – devoid of distinctive character. K-Swiss appealed this decision on 23 April 2014.

The Second Board of Appeal (BoA) dismissed this appeal on 30 October 2014 on the basis that the five parallel stripes do not have any original feature, such that they are banal generic embellishment in view of the widespread practice of using a stripe pattern on sports shoes.

The action to the General Court (Second Chamber) was filed on 6 January 2015.

Arguments submitted by K-Swiss

1. Infringement of Article 7(1)(b)

The practice of placing marks on the side of shoes is common place amongst sports shoe manufacturers such that consumers pay more attention to the shapes placed on the side of shoes and will naturally consider them to be trade marks.

2. Infringement of Article 76(1)

K-Swiss argued that the BoA ought to have supplemented the evidence provided.

Decision by the General Court issued on 4 December 2015

1. Infringement of Article 7(1)(b) – rejected

The BoA correctly held that stripes are nothing more than banal generic embellishment. A design which is simple and banal is unlikely to acquire distinctiveness just because it is placed and on the side of shoes. Further, as the sign in question extends to the full height of the side of the shoes, this lacks originality as the size variation is determined by the shape of the object on which the stripes are placed.

Although K-Swiss provided information to show that many manufacturers of sports shoes display signs on the side of shoes, this does not show that the average customer will automatically link said sign with a particular manufacturer.

Where simple geometric shapes on the side of shoes are recognised to belong to a particular manufacturer, the distinctive value of the mark may be explained less by the positioning of the mark on the shoe and more by the intensive use of the mark. Accordingly, simple geometric shapes do not necessarily have a distinctive function.

The General Court held that K-Swiss did not provide sufficient evidence to show that the average consumer would consider the mark applied for to be an origin of the goods at issue and not a mere decorative element.

2. Infringement of Article 76(1) – rejected

It is not for the BoA to supplement evidence. K-Swiss did not provide specific and substantiated information to show that the mark applied for has an intrinsic distinctive character.

The General Court rejected the action in its entirety.

Comment

The decision confirms that simple geometric marks will be considered inherently unregistrable and banal unless sufficient evidence of acquired distinctiveness can be provided. This evidence must demonstrate that the average consumer connects the sign applied for to belong to a particular undertaking without further thought or consideration.

Charlotte Wilding (née Blakey)  12 April 2016

[*Now EUIPO]

This article first appeared in the March/April 2016 edition of ITMA Review