The German shoe brand Birkenstock is widely known for its sandals having a recognisable, anatomically shaped insole. Recently, the company’s sole pattern has been the subject of several trade mark decisions in the EU.

Sole Takeaways

• The threshold for obtaining trade mark protection for pattern marks in the EU is high. Only extraordinary designs, namely those so uncommon that they have an inherent degree of distinctiveness or those used so widely that they have acquired distinctiveness, will obtain trade mark protection.
• In relation to position marks, it is essential that any description accompanying the mark matches the goods applied for. For example, if the description states that the mark is to be applied to a belt, other goods which are not belts should not be included in the specification.

Background

Since 27 June 2012, Birkenstock has been the owner of the Benelux trade mark shown below: a depiction of simple repetitive waved shapes and lines used on their products’ soles.

Historically, the European Intellectual Property Office (EUIPO) has refused Birkenstock’s applications to register the pattern. The EUIPO found their device mark had no distinctive character and was merely a representation of a surface pattern, and so could not fulfil the essential origin function of a trade mark. Whilst the company had registered the depiction of the patten as a Benelux device mark, this trade mark has since been partially nullified for the same reasons after one of their competitors, Footsie, brought invalidity proceedings.

Surface Level Issues

In the latest turn of events, the German Patent Court confirmed that a position mark showing the Birkenstock pattern also lacks distinctiveness.[1] Birkenstock argued its pattern creates a bone-like impression. The company referenced how its position mark in Germany was registered for a broad range of goods in classes 10, 18 and 25 with the following description:

“The trade mark protection for the sole of shoes, in particular sandals, clogs and slippers, which consist of a pattern composed of waves consisting of circular arcs intersecting at an angle of 90 degrees, whereby the areas of the sole surface enclosed thereby receive a bone-like visual impression.”

However, the German Court of Appeal found that the Birkenstock position mark should instead be considered a surface pattern: parts and accessories of shoes regularly use surface patterns with simple shapes and lines for better grip (i.e. a functional purpose rather than one intended to indicate the commercial origin of the product). The depicted sign was held as merely a repetitive pattern that could be used indefinitely in all four directions.

A key function of a trade mark is its ability to function as a badge of origin. This means a consumer must be able to use the mark to distinguish the goods or services of one undertaking from those of another. A trade mark must have distinctive character in order to be able to have such an effect. For less traditional trade marks, such as position, shape or colour marks, it is considered less likely that the public will perceive them as indicators of origin. For Birkenstock, the mark consisted of the appearance of a part of the product. In order to have distinctive character, the sign must significantly deviate from the standard of what is common in the relevant industry. In this latest German decision, this was held not to be the case for Birkenstock. The Court came to this conclusion based upon evidence of prior art which showed other soles which pre-dated the application date and featured similar wavy lines and other patterns. For soles, the mark was held to be non-distinctive against these other pre-existing designs.

In relation to the goods which were not soles, the Court found that the mark was non-distinctive and did not make sense. This is because the description stated that protection was sought for soles, but goods such as upper shoe parts have no connection to soles. The position mark and its description were therefore incompatible for these goods.

Comment

It is possible to register a pattern as a trade mark in principle. However, this case demonstrates the challenges in registering patterns in practice. For a trade mark to be registrable, it must be distinctive enough that consumers will perceive it as an indicator of trade origin. In most industries, patterns are likely to be perceived as serving a merely decorative or technical function and will be refused. However, a pattern may have more success where it is particularly fanciful or unusual, departs significantly from the norms of the sector or has acquired distinctiveness through use. Additional caution must be taken in relation to position marks, and any accompanying description. A position mark and its description must align with the goods for which protection is sought, or it will be refused protection for such goods. When choosing a pattern which you aim to register as a trade mark, you should ensure that:

1. The pattern departs significantly from what is usually seen in the relevant sector; and/or
2. you are able to provide evidence which demonstrates that your use of the mark is such that it has become known in the market as only being associated with your products i.e. that it has acquired distinctiveness.

Other options may include copyright protection or registered designs. For example, Birkenstock’s “Madrid” model was granted copyright protection in Germany, and it successfully secured a preliminary injunction against similar shoes in that territory.[2]

Amber Louise Smith, London Trainee Solicitor, contributed to the drafting of this alert.

[1] Case no. 28W (pat) 24/18.

[2] The High Regional Court of Hamburg, case no. 5W 40/21.

[View source.]