K-Swiss filed a Community trade mark application for "footwear" in Class 25 as set out below:


Further to the registration by the OHIM of this trade mark, Künzli SwissSchuh AG filed an application for a declaration of invalidity on the grounds that it was devoid of distinctive character.


The Cancellation Division granted the request for a declaration of invalidity. In particular, it stated that, "the contested Community trade mark, which is presented in the specific form of a design with five stripes, did not constitute an adequate starting point for fulfilling the function of indicating the commercial origin of the products concerned, that the five stripes placed on the shoe were basic geometric shapes and that they would be perceived as a technical means to reinforce the shoe or as a pure embellishment of an indistinct, common nature".


This decision was confirmed by the Second Board of Appeal of the OHIM, which held in particular that:


  • The Community mark at issue, consisting of the two-dimensional representation of the shape of a shoe showing five parallel stripes, does not possess the required minimum degree of distinctive character given that there is nothing about the sign at issue that makes it distinguishable from the appearance of the product that it covers;
  • The fact that the product is represented using a dotted line does not render the entire representation distinctive, since this is a minor detail which fails to draw the consumer’s attention away from the fact that the sign represents a shoe;
  • The five parallel stripes form a basic geometrical pattern which is positioned on the shoe where regular purchasers of sports and leisure shoes would expect to find a figurative element; those five stripes inserted in the shape of a shoe are consequently banal and common for manufacturers of sports and leisure shoes.


K-Swiss contested this decision before the General Court of the European Union. It notably claimed that:


  • Its trade mark is in fact a "position mark";
  • In the sports and leisure shoe sector, consumers are accustomed to making assumptions as to the commercial origin of products based on simple signs, composed of lines or stripes placed on the products, in particular on the side of the products;
  • The number of stripes used is unusual and since this number is limited, it can be easily identified by consumers;


The General Court rejected these arguments, finding that:


  • The Community mark at issue was presented by the applicant in its trade mark application as a figurative mark. The trade mark application does not contain any description of the trade mark which suggests that it includes only the five parallel stripes and that the representation of the shoe serves only to provide details of the positioning of those stripes on the product;
  • The Board of Appeal was correct in holding that placing decorative elements on shoes is a common practice, that many variations of geometric patterns are placed on the side of shoes and that consumers would not consider those elements to be an indication of origin of the products unless they have become fixed in the minds of consumers through intensive use;
  • There was no proof that the trade mark at issue departed significantly from the norm or customs of the sector.


The decision to annul the trade mark at issue was therefore confirmed.


It is interesting to note that, as the application for the trade mark at issue did not include a description, the sketch of the shoe used by the applicant to indicate the position of the five parallel stripes it wished to protect was taken into consideration in the assessment of the distinctive character, even though the stripes were set out in dotted lines.


Contact: Gwénaël Toussaint

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