Can something be simultaneously iconic and lack distinctiveness under trade mark law?
Last week, the General Court (GC) answered this question in the affirmative in its decision in T-483/20 Tecnica Group, concerning trade mark protection of the shape of an icon of Italian fashion design and history: the Moon Boots.
Inspired by the boots worn by Neil Amstrong to walk on the surface of the Moon in 1969, the Moon Boots were the first, dedicated after ski footwear. Since then, over 20 million pairs have been sold. The Moon Boots have been also displayed in world-class museums like the MoMa and the Louvre.
In 2011, Tecnica applied to register the 3D sign below, corresponding to the shape of its Moon Boots after ski footwear, as an EU trade mark (EUTM) for goods in classes 18, 20, and 25. Registration (No 10 168 441) was granted the following year.
Following proceedings before the courts of Venice in Italy, through which German company Zeiteneu had unsuccessfully sought to obtain a declaration of non-infringement of the Moon Boot shape EUTM, that company filed an application with the EUIPO to obtain a declaration of invalidity of the Moon Boot shape mark, in accordance with what are now Article 59(1)(a) and 7(1)(b)-(e) EUTMR.
After a partial declaration of invalidity (lack of distinctiveness for class 25 goods) by the EUIPO Cancellation Division, which was upheld by the First Board of Appeal (BoA), a further appeal was filed by Tecnica before the GC.
The GC decision
Having reviewed and dismissed the pleas based on procedural aspects – including the lack of res judicata value of the Venice courts’ decisions on the EUIPO, given that those courts had not been tasked with deciding on the validity of the Moon Boot trade mark but rather only on the question whether Zeiteneu infringed it -, the GC turned to the assessment of distinctiveness of the Moon Boot trade mark for class 25 goods.
In this regard, the Court recalled well-established principles, including the one according to which – for 3D marks and, more generally, less ‘conventional’ signs – the degree of distinctiveness required to obtain (or maintain) registration is in principle no different than that of other, more ‘conventional’ signs.
In practice, however, “the average consumer’s perception is not necessarily the same in the case of a three-dimensional mark, which consists of the appearance of the product itself, as it is in the case of a word or figurative mark, which consists of a sign unrelated to the appearance of the goods it denotes” (para 86). Put it differently: “Average consumers are not in the habit of making assumptions about the origin of goods on the basis of their shape or the shape of their packaging in the absence of any graphic or word element, and 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” (para 87)
All the above means 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” (para 88) shall be regarded as possessing distinctiveness and be, as a result, registrable.
Turning to the present case, the Court considered at the outset that – for class 25 goods and contrary to what Tecnica had submitted – the relevant consumers would be the general public in all the EU Member States. As such, relevant consumers would have an average level of attention.
The Court then moved on to consider whether the overall impression conveyed by the shape of the Moon Boots departs significantly from the norms and customs of the sector, that is the after ski footwear sector. It inter alia noted that the circumstance that a mark has an overall shape that is similar to variants of the product, which are usually available on the market, does not permit the finding that the mark, as a whole, departs significantly from the customary shapes in the sector.
Ultimately, the Court agreed with the BoA that “the shape of the contested mark corresponds to the common shape of after-ski boots, which generally consist of a high shaft, often in a light synthetic material, with soles and laces.” (para 98) As such, it would lack distinctiveness, at least for Class 25 goods.
Readers might recall that, last summer, The IPKat reported on the then fresh GC decision relating the Guerlain’s Rouge G lipstick shape mark and regarded it as offering some hope for those seeking to register less conventional signs. In that case, in fact, the Court found that the shape at issue satisfied the significant departure test and could be therefore registered. Last week’s Moon Boot decision brought us back to (a non-distinctive) reality, adding to the (long) list of (in)success stories.
Another interesting aspect of the Moon Boot saga is that, while the trade mark registration has been regarded as partly invalid, Italian courts have, on different occasions (including in the context of the aforementioned Venice decisions), found that the iconic after ski footwear is deserving of copyright protection. Most recently, this is what the Milan Court of First Instance held (Trib. Milano, Tecnica Group S.p.A. v Diana S.r.l., decision No 493/2021, 25 January 2021) in a copyright infringement case – decided nearly a year ago – that Tecnica successfully brought against the maker of Chiara Ferragni-branded after ski boots. In any case, the requirements for trade mark registration and copyright are and remain obviously distinct. Last week's GC decision also provides an indirect reminder in this sense.
[Originally published on The IPKat on 24 January 2022]