[Guest post] Shaping the right form of (IP) protection: The Moon Boot decision(s)

It might not be the best season for après-ski boots (at least in the Northern Hemisphere), but The IPKat is nonetheless delighted to host the following guest contribution by Federica Pezza (HoganLovells), discussing an interesting, recent cancellation decision of the Board of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) concerning a 3D trade mark in the shape of this type of boots.

Here’s what Federica writes:

Summer solstice, borders reopening, tanning lotions ready…

You might not be in a good shape, my dear (quarantine perks). Still, skiing is probably not an option right now, isn’t it?

This is a story which comes from sunny Alicante and – surprisingly enough- it is all about trade marks, shapes (not yours, I am afraid) and after-ski boots. In its decision of 18 May 2020 in R 1093/2019-1, Shoes (3D), the EUIPO First Board of Appeal (BOA) confirmed the Cancellation Division’s earlier findings that Tecnica Group S.p.a.’s (Tecnica) 3D mark representing the shape of a boot (Tecnica Mark) was not distinctive in relation to goods in class 25. On this basis, it upheld Zeitneu GmbH’s invalidation claim and ordered the cancellation of the sign for said goods.

This case is particularly interesting as it gives us the opportunity to review the key principles underlying the assessment of distinctive character of a mark, with specific regard to shape marks. Moreover, as these very same “astronaut-boots” were also the subject of copyright proceedings in Italy, we will then turn to the different question of the delicate interaction between different IP rights and, in particular, to the relation between trade mark and copyright law.

According to Article 7(1)(b) EUTMR, marks which are devoid of distinctive character cannot be registered. The provision does not distinguish between different categories of signs.

Still, following the practice of the Office, in applying this uniform legal standard to different trade marks and categories of trade marks, a distinction must be made depending on consumer perception and market conditions. For signs consisting of the shape of the goods themselves it may be more difficult to come to a finding of distinctiveness, as such marks will not necessarily be perceived by the relevant public in the same way as a word or figurative mark (see, eg, C-136/02 P, Torches, para. 30). In particular, in order to be distinctive, the shape must differ significantly from the shape that is expected by the consumer, and it must differ significantly from the norm or customs of the sector.

The BOA upheld the cancellation of Tecnica’s Mark, ruling that the astronaut-boot “has the general ‘L’ shape of any other boot that has to adapt to the feet, and that the remaining features do not have anything particular compared to other after-ski boots”. Interestingly, at para. 64 of its decision, the BOA expressly took into account the fact that “between the initial design and marketing of the product, and application for registration some 40 years later a number of similar, even identical products, were marketed from diverse commercial sources”, also noting that most of them had “no commercial link with the EUTM proprietor” (emphasis added).

In order to support its claim, Tecnica had made reference to the legal actions that had taken place in Italy against Zeitneu GmbH and, in particular, the Venice courts’ decisions at first instance and on appeal (respectively, decisions Nos 3143/2016 and 851/2019), where the Moon Boots shape was recognised as a “reputed mark”. On this point, in line with the current practice of the Office, the BOA noted that, while the Office is indeed obliged to consider such judgments, the EU trade mark regime is an autonomous system which “applies independently of any national system”.

Finally, at paragraph 77 of its decision, the BOA considered that “the market of clothing, footwear and their accessories, is a market of design products, characterized by the originality of the shapes of the products or their decorative elements, which are appreciated for their originality and aesthetic beauty” (emphasis added. However, “this does not normally fulfil the function of indicating the commercial origin of the products themselves”. This last finding gives us the chance to turn to the second part of our analysis, and namely to the relationship between trade marks and copyright law.

In its decision of 12 July 2016 (No 8628/2016), the Court of Milan ruled that, in view of their particular aesthetic impact, the Moon Boot boots qualified for protection under Article 2 No 10 of the Italian Copyright Law. In particular – in the court’s view – this was because, when the astronaut-like shoes first appeared on the market, they “profoundly changed the same aesthetic concept of the after-ski boot, becoming a true icon of Italian design and its ability to irreversibly evolve the taste of an entire historical era in relation to everyday objects”. In this respect, the following should be noted:

• On the one hand, in establishing the artistic value of the shoes, the Milan court expressly took into account, inter alia, the fact that the Moon Boot shoes had been in display at the Louvre Museum in Paris, as well as that the product had won national and international design awards. Indeed, these are also two of the key factors considered by the Office when assessing the reputation of a mark.
• On the other hand, in sharp contrast with the BOA decision, the court had dismissed the claim that the Moon Boots had fallen into the public domain. On this point, the Italian judge noted that, by producing copies of the agreements that it had entered into with third parties, Tecnica had sufficiently demonstrated its efforts to effectively prevent the ‘genericide’ of the Moon Boot.

Similar principles were expressed, more recently, by the Turin Court of First Instance in its decision of 4 April 2017(No 1900) in the Vespa case. Indeed, also in that instance the famous scooter made by Piaggio was considered a copyright work. Moreover, differently from the Milan court’ decision (where the specific question, however, had not been raised), the Turin court also confirmed the validity (and the infringement) of the Vespa 3D trade mark.

Quite interestingly, that court expressly took into account in its assessment “the extreme diffusion of the vespa on the Italian scooter market” as well as the “results of the demographic survey conducted in July 2014 by Doxa on behalf of [Piaggio]” (emphasis added).

By holding that the Moon Boot shoes would not be distinctive, the BOA confirmed the well-settled principle according to which it is not sufficient for a shape to be aesthetically pleasing for it to be distinctive. (Nothing surprising, you might say).

Still, a number of questions remain. For instance, what if surveys were also submitted before the BOA (as in the Vespa case)? And, to what extent could the enhanced aesthetic value of a shape be reconciled with the exclusion set out under Article 7(1)(e)(iii) EUTMR (shape giving substantial value)? Furthermore, the reference made by Italian courts, when assessing copyright protection of a shape, to criteria which are normally used in trade mark law is at least questionable.

You’d better take your tanning lotion out, my dear. This is going to be a long summer and after-ski shoes are probably not your best option right now.