Does Reputation Ensure Distinctive Character of a Trade Mark? Not Necessarily

The General Court of the European Union (EGC) handed down its decision on the invalidity proceeding brought against the well-known Moon Boot 3-D trade mark registration. The GC took a close look into the distinctiveness of 3D signs, providing new guidance on the subject.

Background
Technica Group S.p.A. owned a trade mark registration for the below 3D sign representing the iconic Moon Boot footwear for goods in classes 18, 20 and 25 (Mark). Moon Boot’s signature footwear, created by Giancarlo Zanatta, was launched in the 1970’s and has been popular ever since.

In 2017, Zeitneu GmbH filed an invalidity action against the Mark and the EUIPO’s Cancellation Division declared the Mark partially invalid in class 25 (e.g., footwear). The appeal filed by Technica Group SpA was dismissed by the EUIPO Board of Appeal, which decided that the sign did not depart significantly from the market of after-skiboots and, as such, the Mark was devoid of distinctive character. Technica Group SpA then turned to the EGC.

The EGC decision
The EGC held that it is a well-established principle that there should be no distinction between the distinctiveness assessment of conventional and less conventional marks, such as 3D marks. However, the perception of the average consumer is not necessarily the same, as average consumers are not in a habit of making assumptions about the origin of the goods on the basis of their shape alone. Therefore, only 3D marks that differ significantly from the norm of the sector concerned will have a distinctive character.

With regard to the Mark, the various features of the product pointed out by Technica Group SpA are merely decorative or technical details and do not contribute to the overall appearance of the product and should simply be considered as variants of after ski-boots. Consequently, the Mark does not differ significantly from other shapes on the market.

Takeaways
No doubt, the ECG decision brought some disappointment, especially considering that the Moon Boot footwear previously obtained copyright protection. This case shows that non-traditional marks with reputation are not guaranteed trade mark protection. In fact, an application may be refused or invalidated, even when similar products available on the market were inspired by the mark itself. Thus, obtaining a trade mark registration for 3D marks is still not an obvious route to protection and brand owners should take into account that a solid IP enforcement strategy involves (i) preventing that a shape becomes generic overtime, and (ii) relying on more than one IP right.

By Serena Totino and Sophie Verstraeten