- The examiner rejected the application on the grounds that the trademark lacked distinctiveness, finding, in particular, that the message it conveyed was informative.
- On appeal, Skechers argued, among other things, that there is no connection between “footwear” and the mark.
- The Board of Appeals recognized the distinctiveness of the sign, finding that it did not represent the goods for which protection was sought.
In Case R 2246/2023 4, the Fourth Board of Appeal of EUIPO held that a trademark has a sufficient degree of distinctiveness when the message it conveys is not basic, common, or universal, and will not be interpreted as such.
Background
On February 17, 2023, Skechers filed an application for a European Union trademark for the figurative mark shown below, seeking protection for goods in Class 25 (footwear):
On March 3, 2023, the examiner rejected the application on the grounds that the mark consisted of a figure behind a general prohibition sign, which would be perceived by the relevant public as a pictogram rather than as a mark identifying the commercial origin of the goods, in accordance with Article 7(1)(b) of Regulation (EU) 2017/1001 on the European Union trademark.
On June 29, 2023, Skechers filed its response, rejecting the argument that the trademark applied for consisted of a pictogram that immediately conveyed information about the characteristics of the goods and services in question.
On September 29, 2023, the examiner denied the application, insisting that the message conveyed by the mark was informational.
On November 10, 2023, Skechers filed an appeal against the decision. In a decision dated April 5, 2024, the Fourth Board of Appeals upheld the appeal.
Resolution
In the examiner’s opinion, the consumer did not have to engage in any mental process when perceiving the mark, which would be perceived as a mere instruction for use: it would be seen as an indication that the user does not need to bend down to put on the footwear because the shoes are designed to be slipped on. Therefore, the examiner found that the mark applied for lacked distinctiveness.
These arguments were rejected by the Board of Appeal, since the trademark applied for did not depict the footwear for which protection was sought. Therefore, it was unclear how the figure could be interpreted as bending down to put on the footwear, given that one arm, shaped like a cane, was positioned behind the figure and the other forearm was facing forward.
As the examiner stated in the notice explaining the grounds for denying the application:
“The trademark application conveys the message that users will not need to bend down to put on their shoes because they are designed to be slipped on. Therefore, there is no need to tie the laces… etc.”
However, both the Board of Appeal and Skechers agreed that this interpretation went too far.
Furthermore, the Board found that the message which the examiner attributed solely to the design required additional steps or some inventiveness in the context of the goods (footwear). As Skechers noted in its reply, a minimum degree of distinctiveness is sufficient to overcome the absolute ground for refusal set forth in Article 7(1)(b).
Comments
This decision sheds light on the factors that must be considered when evaluating the elements of a trademark to determine whether there is a minimum level of distinctiveness sufficient for consumers to perceive the commercial origin of the goods in question.
Furthermore, the ruling states that no additional steps or inventions may be required in the context of the goods when assessing the distinctiveness of the sign. The relevant consideration is whether the message conveyed is not basic, common, or universal and will not be interpreted as such.
Any interpretation that remains within the realm of subjectivity and cannot be justified by the existence of a direct and clear link between the mark and the claimed product or service shall not be taken into account in rejecting a trademark application.
Paloma Querol, Associate at ELZABURU