22/03/2022
In 2012, Tecnica Group registered at EUIPO a 3D shape mark for the apres-ski footwear brand Moon Boot. Inspired by the outfits of the Apollo 11 astronauts, the brand has been around since the 1970s and has seen a recent revival in popularity, now being worn by influencers Dua Lipa and Hailey Bieber.
In 2019, the 3D trade mark registration was partially cancelled after a declaration of invalidity. The Cancellation Division found that even if the boots had departed significantly from the norms of the sector when first introduced to the market, they were no longer markedly different by 2012. Subsequently, Tecnica took the matter to the EUIPO Board of Appeal.
The Board of Appeal found that the Cancellation Division was correct to find that the shape mark lacked inherent distinctiveness. In particular, they noted that the general L-shape design and modern synthetic materials in place of traditional leather were design choices shared with many modern apres-ski boots.
The Board stated that while a footwear design may be “appreciated for their originality and aesthetic beauty”, this does not necessarily guarantee that the design would meet the legal threshold of indicating the commercial origin of the products.
Tecnica decided to further appeal the decision up to the General Court.
Decision of the General Court
The General Court denied the appeal, upholding the Board of Appeal’s decision that the shape mark lacked inherent distinctiveness.
The Court agreed with Board of Appeal’s finding that the shape and thickness of the soles did not constitute a distinctive feature. They also agreed that the position of the laces, the parallel stripes on the shaft of the boot, and the height of the shaft of the boot were merely variants of shapes used in the after-ski boots sector.
The Court admitted that “it could prove more difficult to establish distinctive character in relation to such a three-dimensional mark than in relation to a word or figurative mark”. They followed by restating that “only a three-dimensional mark, consisting of the appearance of the product itself, which departs significantly from the norm or customs of the sector and thereby fulfils its essential function of indicating origin is not devoid of any distinctive character”.
The Court also affirmed the finding in the 2019 case SHAPE OF A FLYING V GUITAR that the presence of potential counterfeit copies in the market is irrelevant to the assessment of the inherent distinctiveness of the contested mark with regard to its perception by the relevant public.
Comment
Tecnica will doubtlesly be disappointed by this decision, especially after their success enforcing the copyright of the boot in 2019 at the Milan Court of First Instance.
We see that again the Office are interested in “the norms or customs of the sector”. We have seen cases where the material submitted by the brand owner helps them. Here, we suspect that some of the evidence submitted by Tecnica hindered the argument. For example, the Board of Appeal found that Google image searches submitted by Tecnica for the Italian word for après-ski boot featured a “significant number” of boots belonging to distinct brands which did not “differ that markedly” from Moon Boots. In addition, the Board of Appeal noted that the 40th anniversary Moon Boot catalogue filed showed the evolution of the design of the boots over the years, and thus suggested that only the brand name MOON BOOT acts as a trade mark.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
