The French footwear brand Salomon has succeeded against Road Star Group, a Czech footwear company, in a dispute over a zig zag design on their shoes.
Salomon brought cancellation proceedings against Road Star in an attempt to invalidate their EU design on the basis that the zig zag design element of their shoe was confusingly similar to a trade mark owned by Salomon for the same shape under Article 25(1)(e) of EU Design Regulation. Article 25(1)(e) provides that an EU design may be invalidated if it makes use of a sign which is distinctive and which the earlier rights holder is entitled to prevent others from using.
The trade mark owned by Salomon, protecting the shape in question, is a figurative mark featuring a double zig zag shape with three peaks and a curved band underneath, with its registration covering footwear. Road Star’s design also featured a zig zag with three peaks and appeared on a sports shoe. Road Star’s defence was that the zig zag shape was a common design in the industry and that there were other, more distinctive, elements of the design of their shoe.
The Cancellation Division had to consider whether there was identity or similarity between Salomon’s trade mark and Road Star’s design and whether there would be a likelihood of confusion, amounting to an infringement of Salomon’s earlier rights. It was found that the goods are identical, being that both the trade mark and the design cover footwear. Further, the Cancellation Division found that the general consumer purchasing footwear pays a normal level of attention and notices visual features as opposed to specifics such as measurements. It was found that the differences were so minimal that the trade mark and the design were so similar that they would go unnoticed to the average consumer.
Due to the distinctiveness of earlier mark, and the fact that the goods are identical, this similarity was enough to cause a likelihood of confusion. The other claims made by Salomon including their claim that the design lacked novelty or individual character were not examined by the division as the case had been fully resolved on the basis of Article 25(1)(e).
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