http://ipkitten.blogspot.com/2024/05/loro-piana-position-mark-for-footwear.html
By decision of 26 April 2024 (available only in
the original version in Italian), the European Union Intellectual Property Office (EUIPO) refused to register a
position trade mark for footwear having considered that a band with a knot and
ribbons with metal pendants affixed to the template of the upper part of shoes
is very common in the footwear sector. Therefore the position sign lacks of
distinctive character under Article 7(1)(b) of EUTMR, as it could not serve as a badge
of origin of the products.
Background
of the case
On 30 June 2023,
fashion company Loro Piana S.p.A. (the Applicant) filed position trade mark no. 018895734 in Class 25 (shoes, loafers,
babouche, sabot):
In the description the
Applicant specified that the “The position mark consists of the combination
of band+knuckle and ribbon+metal pendants, one in the shape of a padlock, the
other in the shape of a ferrule (such pendants are typical of Loro Piana),
which, as a whole, is applied to the upper mask covering the upper part of the
foot, in whole or in part, and always positioned closer to the tongue than to
the toe of the shoe. The dotted lines are not part of the position mark, but
serve only to indicate the position and proportions of the mark in relation to
the shoes on which it is applied”.
The decision
The EUIPO recalled the
results of an on-line search conducted by the examiner, which led to the
initial objection that the sign in question applied to the upper part of the
shoe. As such, it would lack distinctive characteristics that could allow for it
to be perceived as an indicator of commercial origin.
The Applicant raised
arguments in support of the trade mark’s distinctiveness, highlighting that the
use of the combination of strap, knot, and ribbons with metallic pendants dated
back to 2005 and that there is an established practice in the footwear industry
for using position marks (EU trade mark EU trade mark no. 018153472, EU trade mark no. 018734154, EU trade mark no. 017959016, EU trade mark no. 017970825, EU trade mark no. 018171317, EU trade mark no. 018171305) as well as case law (R-51/2006-4, R-2069/2020). The Applicant stressed that the padlock and
pendants are also protected as 3D trade marks under EUTM application no. 018840401 for the padlock and for the pendants
under EUTM registration no. 018840443.
Moreover, according to
the Applicant, the sign must be considered distinctive given that it is
subjected to several cases of offline and on-line infringements.
The EUIPO recalled
that, while the criteria for assessing distinctiveness are the same for the
different categories of trade marks, it may become evident when applying these
criteria that the expectations of the relevant public are not necessarily the
same for all categories of trade marks and that, therefore, it may be more
difficult to establish the distinctiveness of some categories of trade marks
than others (C-456/01). Position trade marks are close to
the categories of figurative and 3D trade marks in that they relate to the
application of figurative or three-dimensional elements to the surface of a
product. However, the qualification of a position trade mark as a figurative or
3D trade mark or as a specific category of trade marks is irrelevant in the
context of the assessment of its distinctiveness (T-547/08). In addition, in the present case,
while the graphic representation of the 3D trade marks filed by the applicant
contains the distinctive wording “Loro Piana” or the letters “L” and “P”, these
verbal elements lack in the application for the position trade mark.
The EUIPO therefore
concluded that the sign in question is just one more variant of the many
existing on the market that adopt simple decorative elements, alone or in combination
with each other. In fact, the location of the sign as well as its representation
do not deviate significantly from the standard or from the customs of the
relevant industry.
Furthermore, the EUIPO
pointed out that the infringement cases cited by the Applicant are not
sufficient proof of the trade mark’s distinctiveness, as many products are
copied without enjoying protection under trade marks or design rights.
Comment
Position trademarks in
the footwear industry may enjoy protection where specific and distinctive elements
are consistently placed on certain areas of a shoe. These trade marks help
consumers recognize the origin of the product as well as to distinguish it from
other products. However, position trade marks must meet stringent criteria for
distinctiveness to ensure they do not represent common design practices. In a
market saturated with decorative elements, the challenge lies in proving that a
position trade mark is not just an ornament but a true indicator of a product’s
origin.
This decision has
broader implications for the footwear industry, as it addresses the balance
between protecting distinctive elements and ensuring fair competition. By
granting or denying the position trade mark, the EUIPO set a precedent for
future applications, guiding footwear companies in their strategies and
fostering a competitive yet fair market environment.
All the above said, recent
rulings by the EUIPO on position trade marks in the fashion industry are not always
converging (see The IPKat here and here). Case law shows that the context is crucial
when evaluating the distinctiveness of a position trade mark. More importantly,
these cases underscore that context must be substantiated with strong evidence
for the EUIPO’s consideration.
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