13 September 2018Trademarks

CJEU stamps out Birkenstock TM appeal

Europe’s highest court rejected an appeal from German sandal brand Birkenstock today, shooting down its attempt to register a figurative trademark.

Birkenstock was appealing against a decision by the EU General Court which had partially refused the registration of its trademark. The Court of Justice of the European Union (CJEU) today followed suit.

Birkenstock is the successor to a company which had obtained an international registration for a figurative mark representing a pattern of wavy, criss-crossing lines.

In October 2012, the European Union Intellectual Property Office (EUIPO) was notified about the mark, which covered classes 10 (medical apparatus); 18 (leather and leather goods); and 25 (clothing).

The following year, the EUIPO’s Examination Division refused to grant protection because the trademark was devoid of any distinctive character.

Birkenstock appealed against the refusal, but the First Board of Appeal of the EUIPO rejected the appeal.

“According to the Board of Appeal, the sign in question, by reason of its intrinsic characteristics, could extend in all four directions of the square and consequently be used on any two-dimensional or three-dimensional surface. That sign would thus immediately be perceived as representing a surface pattern,” said advocate general Maciej Szpunar, in his opinion issued in June this year.

In light of case law, the appeal board noted that the average consumer isn’t used to deriving the commercial origin of goods from signs which coincide with the appearance of the goods (a surface pattern) and that these signs only have distinctive character if they “depart significantly” from the standard.

The board found that the mark was “banal” and that the overall impression didn’t detract from what was common in the sectors concerned, so the mark wasn’t distinctive.

Again, Birkenstock appealed against the decision, claiming that the board didn’t rely on the sign in its registered form.

The General Court annulled the decision in respect of some goods in classes 10 and 18 but dismissed the remainder of the action as unfounded.

It found that as the sign consists of a series of elements which are repeated regularly, the use of the mark as a surface pattern was not ‘unlikely’ for most of the goods covered by the mark.

Birkenstock challenged this decision before the CJEU, claiming that the General Court’s finding that the mere ‘possibility’ that a sign might be used as a surface pattern is sufficient to apply the case law relating to “indissociable” marks.

In June, Szpunar advised the CJEU to reject the appeal, stating that “it is only when the use of a surface pattern is unlikely in view of the nature of the products at issue that such a sign cannot be considered a surface pattern in respect of the products at issue”.

The court followed Szpunar’s opinion today, concluding that Birkenstock’s plea was unfounded (along with other arguments presented by the German company) and ordering Birkenstock to pay the costs.

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