The EU General Court rules on the distinctiveness of the 3D trademark depicting Tecnica’s “Moon Boots”

On August 2, 2011, Tecnica Group Spa filed a trademark application with the European Union Intellectual Property Office (EUIPO) for the following three-dimensional sign, for goods and services classes 18, 20 and 25 (essentially leather, bags, suitcases; furniture; clothing and footwear):

Following the registration of the mark on March 20, 2012, the company Zeineu Gmbh acted against Tecnica before the Court of Venice, seeking a declaration that its own footwear, similar to the product depicted therein, did not infringe the trademark in question. The Court of Venice, in a decision dated November 22, 2016, later confirmed by the Court of Appeal, dismissed the action and found that there was a likelihood of confusion between the disputed trademark and Zeineu footwear.

On May 17, 2017, Zeineu then filed an application with the EUIPO for a declaration of invalidity of the Tecnica trademark. In a decision dated March 28, 2019, the EUIPO partially granted the Zeineu application, declaring the Tecnica trademark invalid for only the goods in class 25 (clothing and footwear) due to a lack of distinctiveness. The decision was later confirmed by the EUIPO Board of Appeal.

Tecnica, therefore, appealed against this decision before the General Court of the European Union, but its appeal was rejected by the decision in question, for the following reasons.

The General Court first of all points out that, pursuant to Article 7(1)(b) of EU Regulation no. 207/2009, the registration of trademarks that are devoid of any distinctive character is not permitted. The distinctive character of a mark presupposes that it allows the identification of the origin of the goods and/or services in question, enabling the public to recognise them and distinguish them from those of other companies on the market. This distinctive character must therefore be assessed taking into account both the products and services for which registration has been applied and the perception of the reference public.

In accordance with its decision on the Volkswagen trademark depicting the well-known “Bulli” van, which we have talked about here on this blog, the General Court also points out that, when it comes to a three-dimensional trademark consisting of the appearance of the product itself, without any graphic or textual element, it is more difficult to establish distinctiveness; this is because the average consumer tends not to make assumptions on the origin of the goods and/or services merely on the basis of a shape, in the absence of any textual or graphic element. In practice, therefore, a three-dimensional trademark consisting of the appearance of the product is distinctive only if it departs significantly from the usual shapes in the sector.

In the present case, the EU General Court concludes that the EUIPO was right to exclude the inherent distinctiveness of the mark in question, since, on the basis of the evidence filed by the parties and of the elements known to it, it ascertained that the shape of the contested trademark does not depart significantly from the common shape of after-ski boots. The EUIPO Board of Appeal based its conclusion, amongst others, on the existence of several similar products on the market that the very applicant Tecnica  had indicated as being earlier than its mark.

In Tecnica’s further claims, the General Court also stated that the decision of the EUIPO Board of Appeal could not even be contested  for failure to assess the distinctive character acquired by the trademark (so-called “secondary meaning”), since Tecnica had not duly asserted this defense; nor for failure to consider the judgments of the Venice Tribunal and Court of Appeal, as these had not assessed the trademark’s distinctive character but had merely ruled on Zeineu’s claim of non-infringement.

On the basis of the above, the General Court therefore rejected Tecnica’s appeal, with a decision that apparently is not in line with that on the Volkswagen Bulli, but which actually seems to have been largely dictated by actual the evidence and defenses put forward by Tecnica.

(For the sake of completeness, we recall that the Tecnica’s Moon Boots reproduced in this trademark were granted copyright protection by the IP Court of Milan in 2016: see here on this blog).