K-Swiss’s ‘banal’ five-stripe CTM application rejected

The EU General Court has rejected K-Swiss’s Community trademark (CTM) application for a five-stripe design to be used on the side of a sports shoe.

On Decembe r 4, the court upheld the Office for Harmonization in the Internal Market’s (OHIM) decision to reject K-Swiss’s application.

In 2013, K-Swiss applied for protection covering a five-stripe design.

Last year, OHIM rejected the application on the grounds that it was “nothing more than a rather banal generic embellishment” and lacked any “original feature”.

K-Swiss contested the rejection alleging that OHIM had failed to take the customers of the market into account when determining if the design functioned as a trademark.

Because it is common practice for sports shoe manufacturers to place the designs on the side of a shoe, K-Swiss argued that consumers’ attention is directed to that portion of the shoe to determine the product’s brand.

The court, however, rejected this argument.

According to the ruling, K-Swiss failed to show “that the average consumer has learned to establish an automatic link between the sign featuring on the side of a sports shoe and a particular manufacturer and that that consumer will therefore necessarily perceive any geometric shape on the side of a sports shoe as being a trademark”.

Furthermore, the court said that K-Swiss had not shown “sufficient evidence to establish that, in view of the banal nature of the sign at issue, the average consumer would consider that sign to be an indication of the origin of goods at issue and not a mere decorative element”.