Position mark 'red shoelaces' refused: lack of distinctive character

Can ‘red shoelaces’ be a trade mark which merges with the goods? The application for this position mark was refused for lack of distinctive character. The CFI confirmed this with comments on the distinctiveness of ‘design’ in a trade mark.

Streitmarke: fehlende Unterscheidungskraft — mark in dispute: lack of distinctive character

In May 2010, the applicant Think Schuhwerk GmbH (Austria) had applied for the disputed mark – a mark with the description “shoes with laces, at the ends of whose laces red needles are arranged”. In the application, this mark was designated as a position mark.

But the desired trade mark application was refused by the EUIPO for lack of distinctive character, including by the Board of Appeal. This is because according to Art. 7(1)(b) of Regulation 207/2009, trade marks which are devoid of any distinctive character are excluded from registration.
The prevented applicant for this position mark appealed against its decision before the European Court of First Instance (CFI).

Appearance merges with the goods

It must be noted in general that the perception of a mark is influenced by the nature of the sign; in particular, if the appearance merges with the goods themselves, according to established case law, a mark is considered distinctive only if it deviates significantly from the norm or customary in the sector.

That was the case in the present case, as the Board of Appeal had stated that a part of the goods merged, namely the lace end of the lace-up shoes. Lace ends had a purely decorative character, so they could not be regarded as deviating from the norm. This was all the more true, the Board of Appeal had stated, as there were goods on the market with identical or similar features.

Lack of distinctiveness confirmed by CFI

The CFI upheld this decision. Even assuming that, as the applicant claims, there are no other shoes on the market sold with laces with ends in the colour Pompeian Red, this is not a convincing argument for distinctiveness, the CFI explained. The recognition of the minimum required distinctiveness of the mark applied for did not depend on how new or original it was, but on the fact that it deviated significantly from what was customary in the industry, the court stressed.

The CFI also found that the applicant’s objection that all other “designs” would continue to be available to its competitors was unfounded, as it was not the lack of availability of the claimed sign that was the ground for attribution, but rather the Board of Appeal’s decision was based exclusively on Article 7(1)(b) of Regulation No 207/2009.

Finally, the applicant made a fundamental effort to convince the Board of Appeal that the position mark in dispute was not a mark which merged with the goods. After all, it was not necessary for all the ends of the laces to be red. However, this objection came too late, because at the preceding oral hearing the applicant had expressly conceded that the criterion applicable in the present case was that of a significant deviation from customary practice in the sector – and that is characteristic of trade marks that merge with the goods.

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