EU court denies ‘Moon Boot’ 3D mark appeal
Italian sports equipment manufacturer Tecnica Group has failed to convince the EU General Court to reinstate its three-dimensional Moon Boot “after-ski” trademark.
Considered the brand's most “emblematic model”, the outdoor clothing manufacturer sought to overturn a European Intellectual Property Office (EUIPO) board of appeal decision that invalidated a registered mark for the boots’ design under Class 25 of the Nice Agreement.
The mark, which was registered in 2012, was challenged by Zeitneu in Italian Court proceedings, with the dispute ending up before the EUIPO’s cancellation division, which ruled that Tecnica’s 3D mark did not depart from established footwear design norms, which led Tecnica to appeal to the EU General Court.
In a judgment delivered on January 19, the court dismissed all pleas in the action and ordered Tecnica to bear its own costs and those of Zeitneu and the EUIPO.
The court claimed that many of the features identified as unique by Tecnica were “decorative of technical details” which had no bearing on the appearance or uniqueness of the boot.
Specifically, it held that the shape and thickness of the soles, the height of the shaft of the boot, and the position of the laces (which were labelled as distinctive characteristics in the original mark) were not uncommon to after-ski boots.
Case background
Tecnica Group first filed the 3D mark application with EUIPO back in August 2011, requesting that its “unique” Moon Boot after-ski boot design be registered as an EU trademark.
It sought registration under Classes 18, 20 and 25 of the Nice Agreement, which correspond to Leather and leather imitation products, plastic goods, and clothing and footwear.
The EUIPO initially registered the design under all three classes in March 2012 as EU mark 10,168,441.
The mark was later challenged by Zeitneu before the Tribunale di Venzia (District Court of Venice). It sought an order for a declaration of non-infringement in July 2014, claiming that Tecnica’s design was not unique.
But the action was dismissed in November 2016, with the court holding that there was a likelihood of confusion between the contested mark and the footwear collections manufactured by Zeitneu. This ruling was confirmed by the Venice Court of Appeal in March 2019.
Zeitneu bought filed an application for a declaration that the ‘441 mark was invalid with the EUIPO in May 2017. In March 2019, the EUIPO’s cancellation division declared that the contested mark was invalid in respect to Class 25 for “footwear” specifically.
Tecnica sought to appeal the decision to the EUIPO board of appeal in May 2019, but the appeal was dismissed and the cancellation divisions decision was upheld in May 2020.
The board ruled that the mark did not depart “very significantly” from the norms of after-ski boots and was devoid of any distinctive character.
Specifically, it held that the “widespread copying” of the design which Tecnica had alleged lent credence to the finding that the contested mark was not distinctive. It also found that the constituent parts and shape of the boots would be taken by the consumer as possible “or even common”.
Tecnica then appealed to the EU General Court to annul the board of appeal’s decision and order the EUIPO and Zeitneu to pay costs.
But the court dismissed the appeal and ordered Tecnica to bear its own costs, as well as those incurred by the EUIPO and Zeitneu.
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