K-Swiss' application for a Community Trade Mark for its five stripes figurative mark has been rejected. K-Swiss' five stripes was submitted as it appears on their shoes.
All trade mark applications are subject to an assessment against the refusal provisions set out in the Community Trade Mark Regulation (and reflected in the UK in the Trade Marks Act 1994). One of the grounds for refusal of registration is that a mark that is devoid of any distinctive character.
The OHIM Second Board of Appeal upheld the decision of the examiner refusing registration of the mark on the basis that it is devoid of distinctive character, being of the view that five parallel stripes on a shoe do not have any original features in the context of the widespread practice of placing patterns on sports shoes. The Second Board of Appeal also ruled that the evidence submitted by K-Swiss did not demonstrate that OHIM would, in usual practice, register designs consisting of stripes only as a mark for sports shoes.
Following a further appeal, the General Court of the European Union agreed that the stripes on sports shoes were nothing more than a 'banal embellishment'. The fact that K-Swiss stripes in particular extend to the full height of the shoe they are placed on was found to contribute to the failed registration, as the mark could not easily be distinguished from the product. This point in particular is one of interest, as it is not entirely clear at what point a mark would theoretically become distinguishable from the appearance of the product it covers.
The decision was upheld despite K-Swiss arguing that it was the norm in the industry to place brand names and logos on the side of sports shoes. The Court did not find the information and evidence submitted in this regard was satisfactory.
As a last resort K-Swiss may make a final appeal of the decision to the Court of Justice. We will keep you updated if they do.
If you are affected by the issues highlighted above or have any questions regarding intellectual property whether protecting your rights or enforcing existing rights please do not hesitate to contact the team at McDaniel & Co. on 0191 281 4000 or firstname.lastname@example.org: News, Trade Marks