What should you keep in mind when trying to protect non-traditional marks in the fashion industry?

Louise Foster and Anastasia Osipovich discuss recent cases around unconventional 3D and 2D fashion trade marks and the role that evidence plays in such cases.

It is no surprise that securing registered protection for the aesthetic appearance and external elements of fashion items is highly desirable for brand owners, especially given that such protection can potentially be limitless in time.

During the course of last year, there were several notable cases concerning unconventional trade marks in the fashion sector and in all instances strong and relevant evidence played an important role in their outcome:

• Recently, Louis Vuitton suffered a further setback in its attempts to defeat an invalidity action brought by Norbert Wisniewski against Louis Vuitton’s EU designation for its 2D figurative Damier Azur pattern filed in 2008. Louis Vuitton failed before the EU IPO, Second and Fifth Boards of Appeal and General Court to establish that the Damier Azur chequerboard pattern was inherently distinctive and/or has acquired distinctiveness for the class 18 goods at issue. The General Court then held in its decision of 19 October 2022 (Case T‑275/21) that Louis Vuitton had not sufficiently demonstrated that the mark had acquired a distinctive character through the use made of it so the case failed on the evidence.

EU designation of International Registration No. 986207

• On 7 September 2022, the Second Board of Appeal upheld the EU IPO’s assessment that a 3D shape mark corresponding to Christian Dior’s famous “saddle bag” did not depart significantly from the norms of the sector in question and therefore lacked distinctive character for ‘bags; handbags; pouches (leatherware), travelling sets (leatherware), toiletry and make-up bags (empty)’ (Case R 32/2022-2). The EUIPO must now examine whether Dior has been able to establish with evidence of use that the 3D shape mark has acquired distinctiveness.

EUTM No. 18435556

• Similarly to the Dior’s saddle bag case, around this time last year in a General Court decision of 19 January 2022 (Case T‑483/20) Tecnica Spa lost part of its ten-year old EUTM for its 3D trade mark consisting of the shape of its MOONBOOT shoe, which had been subject to an invalidity attack by Zeitneu GmbH. The General Court upheld the decision of the First Board of Appeal that the shape of Tecnica’s 3D sign when taken as a whole would be perceived as a possible or common variant of the presentation or decoration of after-ski boots, and so does not depart significantly from the norms of the sector.

EUTM No. 010168441

 

• In a success story for Munich SL, Munich held onto its EUTM for a positional mark consisting of a pattern of crossed stripes placed on the side of a shoe, which had been subject to invalidity proceedings brought by Deichmann SE. In a decision of 4 May 2022 (Case T-117/21) the General Court agreed with the Fourth Board of Appeal that Deichmann had not demonstrated that Munich’s position mark lacked distinctive character. Conversely, Munich’s evidence successfully showed that simple designs on the side of shoes, including its own, may serve as an indicator of commercial origin for the relevant public.

EUTM No. 2923852

 Difficult to depart significantly from the norm

The Tecnica and Dior decisions, where the relevant sectors were both held to be characterised by a wide variety of shapes, underline the difficulty that can exist in showing that a shape is a significant departure from the norms of the fashion sector.

The overall combination of features of the shape applied for simply being a “variant” of other shapes in the relevant sector will unlikely be enough to render the mark distinctive.  Any differences between the shape represented by the mark and shapes of goods on the market need to be significant to the extent they are immediately apparent as an indicator of commercial origin.

Although the more obscure origins of the signs in question were highlighted by both parties –  in Tecnica’s case inspiration for the MOONBOOT being taken from astronaut’s boots and Dior a design based on a riding saddle – both shapes in question were found on an overall assessment to constitute mere variants of other product shapes available.

Similarly, in Dior’s case, the existence of a Pinterest post identifying two bags held to have similarities to Dior’s sign was enough for the mark to be deemed non-distinctive within the handbag sector.

Think about what the evidence is really showing

Evidence is key to the outcome of all these cases, but it is vital to carefully consider what evidence really shows before relying on it.

The Cancellation Division found that Munich’s evidence was convincing in showing that consumers had become accustomed to sports shoe manufacturers placing trade marks, including those consisting of linear patterns, on the side of their shoes.

Conversely, evidence of trade mark registrations for simple designs applied to the side of sports shoes put forward by Deichmann, intended to show that Munich’s mark does not significantly differ from elements commonly used on sports shoes, was held to confirm the finding that such signs do in fact function as trade marks.

Some of Tecnica’s evidence was also found to work against its case. Examples of after-ski footwear available on the market presented by Tecnica in support of its registration were found to demonstrate that its own mark does not depart significantly from the norms and customs of the sector.

Tecnica’s argument that the success of its MOONBOOT shoe caused copies to be manufactured by third parties was held to support that its 3D mark was just another variant of the many shapes of after-ski footwear available.

Takeaway points

The cases above serve as reminders that obtaining registered trade mark protection for unconventional marks in the fashion industry is not always easy. Depending on your business objectives for a particular product, considering alternative forms of protection, e.g. a registered design, could also be of value.

Nevertheless, if you consider that the shape or a feature of your fashion product is distinctive enough for a consumer to perceive as an indicator of origin, it is worth looking into potential obstacles which may preclude you from pursuing such protection, as well as the robust evidence and arguments which may be needed to acquire or maintain your registered trade mark rights.

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Category: News | Author: Louise Foster | Published: January 2023 | Read more

Tags: #BrandProtection #Trademarks Fashion FashionBrands NontraditionalTrademarks ShapeTrademarks