General Court denies trademark for red shoelaces
The General Court of the EU has refused to grant a trademark for red-tipped shoelaces in a case reminiscent of the Christian Louboutin v Yves Saint Laurent (YSL) trademark dispute.
In 2010 Austrian company Think Schuhwerk, which sells a range of men and women’s shoes, applied for a Community mark to protect “shoes with laces with red tips on the ends of shoelaces” under class 25.
The Office for Harmonization in the Internal Market (OHIM) rejected the application a year later on the grounds that it was devoid of distinctive character.
An OHIM appeal board subsequently dismissed an appeal, finding that the red-tipped shoelaces “would not produce an impression that would differ greatly from the normal patterns of lace-up shoes”.
On appeal, the General Court affirmed the earlier rulings, first rejecting Think Schuhwerk’s claim that because its shoes were made for comfort, the public would pay more attention to them and therefore would have character.
“OHIM may only take into account the list of products as a result of the trademark concerned ... However, in this case, the list of products covered by the mark applied for only mentions shoes, especially laces ‘without further specification’,” the court found.
Think Schuhwerk also argued that shoes sold with red-tipped shoelaces but different coloured laces are rare – and therefore distinctive.
But the court said: “The applicant provides no evidence to suggest that the colour of parts of the laces of a shoe is usually perceived by the relevant public as an indication of commercial origin.”
Dominik Göbel, a lawyer at Gassauer-Fleissner Rechtsanwälte in Vienna, said the decision is “plausible because the ends of shoe strings in red don’t seem to be inherently distinctive”.
He said the case instantly reminded him of the high-profile US trademark dispute between fashion designers Louboutin and YSL, in which Louboutin obtained trademark protection for its red soled-shoes combined with different coloured tops.
“But this [Louboutin mark] was registered as acquired distinctiveness,” he said, adding that Think Schuhwerk should have included evidence such as customer surveys to argue that the red-tipped laces had acquired distinctiveness.
Egon Engin-Deniz, partner at CMS Reich-Rohrwig Hainz in Vienna, added: “They haven’t argued for acquired distinctiveness, but they can’t argue this now anyway, as facts can be presented only in the first instance. It’s too late.”
Noting that the court was also unclear about whether Think Schuhwerk wanted to register laces by themselves or alongside a shoe, he said: “Was it a mistake to file the trademark as it was, and would it have been to better to present the laces the way you would find them in the store – folded or put together? This may have made the red endings more visible and may have made things better.”
The case can be appealed to the Court of Justice of the EU, but Engin-Deniz said it would be unlikely to succeed. “I would never say never, but I don’t think it has a good chance.”
