Source: EURLEX
Language: en
Format: md

Case T‑573/18

Hickies, Inc.

v

European Union Intellectual Property Office

Judgment of the General Court (Sixth Chamber), of 5 February 2020

( EU trade mark — Application for a three-dimensional EU trade mark — Shape of a shoe lace — Absolute ground for refusal — Lack of distinctive character — Article 7(1)(b) of Regulation (EU) 2017/1001 — Protection of a right relating to an earlier design — Evidence submitted for the first time before the Court )

EU trade mark — Definition and acquisition of the EU trade mark — Absolute grounds for refusal — Marks devoid of distinctive character — Three-dimensional trade marks consisting of the shape of the product — Distinctive character — Criteria for assessment — Novelty of the shape of the product — Inadequate criterion to make a finding of distinctiveness — Existence of a right concerning a protected design — Lack of relevance

(Regulation of the European Parliament and of the Council 2017/2001, Art. 7(1)(b))

(see paragraphs 62-65)

Résumé

By its judgment of 5 February 2020, Hickies v EUIPO (Shape of a shoe lace) (T‑573/18), the Court dismissed the action brought against the decision of the European Union Intellectual Property Office (EUIPO) which had refused registration of a three-dimensional mark consisting of the shape of a shoe lace, on the ground that it was devoid of any distinctive character.

Hickies, the applicant, had applied for registration of a three-dimensional sign which takes the shape of a link which is represented in four illustrations from different angles. At one end of that link is an eyelet into which the button at the other end can be inserted to close that link. EUIPO found that the mark applied for was devoid of any distinctive character (
[1](#t-ECR_62018TJ0573_RES_EN_01-E0001)
) in respect of certain of the products for which registration was sought, in particular for shoe laces.

The applicant maintained inter alia that the mark applied for was a completely new type of fastening system and departed significantly from the norms and customs of the footwear sector. In that regard, in order to counter the examples cited by EUIPO, it claimed that the goods concerned were imitations and that none of the websites mentioned were sites of trade mark proprietors, but rather were online sales platforms well known as being used by counterfeiters as sales vehicles. In that regard, the Court held that the fact that online sales platforms are concerned in no way diminishes the probative value of the evidence provided by the examiner seeking to demonstrate the existence on the EU market of shapes similar to that forming the mark applied for. Moreover, even if some of those sites were to be used for the sale of counterfeit goods, that possibility alone does not prove that the goods referred to by the links cited EUIPO are counterfeit. In any event, the court does not have jurisdiction to rule on the alleged counterfeiting.

Further, the applicant relied on the novelty of the product whose shape corresponded to that of which the mark applied for consists. The Court held that even if that novelty were established, that fact does not necessarily mean that that mark is distinctive. It recalled that the signs commonly used for the marketing of the goods or services concerned are deemed incapable of identifying the origin of those goods or services. Nevertheless, that claim cannot be interpreted a contrario to conclude that the mark applied for has distinctive character when it is not commonly used for the goods and services at issue. Indeed, the assessment of an EU trade mark’s distinctive character is not based on the originality or lack of use of that mark in the area covering the goods and services concerned.

In addition, the Court pointed out that the applicant’s argument that there has been an infringement of the right to two EU designs by reason of the marketing of goods with a shape similar to that of the applicant’s product, whose shape corresponded to that of which the mark applied for consists, does not affect the analysis of the intrinsic distinctiveness of the mark applied for. In fact, the protection of design right does not imply that the shape concerned is distinctive, because the criteria for examining those two rights are fundamentally different. The protection of a design right concerns the appearance of a product that differs from existing designs and is based on the novelty of that design, namely that no identical design has been publicly disclosed, and on its individual character. By contrast, in the case of a trade mark, while the shape of which the mark applied for consists must necessarily depart significantly from the norm or from the customs of the sector concerned in order for it to have distinctive character, the mere novelty of that shape is not sufficient ground to find that such a character exists, since the decisive criterion is the ability of that shape to fulfil the function of indicating commercial origin.

According to the Court, the Board of Appeal of EUIPO was also correct to downplay the importance of the design awards relied on by the applicant. Indeed, the fact that goods benefit from a high quality design does not necessarily mean that a mark consisting of the three-dimensional shape of those goods enables ab initio those goods to be distinguished from those of other undertakings. In addition, the experts awarding those prizes may focus on very small differences, while the relevant public, with average attention in the present case, will not carry out an analytical examination of the shape at issue.

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(
[1](#c-ECR_62018TJ0573_RES_EN_01-E0001)
) Within the meaning of Article 7(1)(b) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark ([OJ 2009 L 78, p. 1](./../../../legal-content/EN/AUTO/?uri=OJ:L:2009:078:TOC)), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark ([OJ 2017 L 154, p. 1](./../../../legal-content/EN/AUTO/?uri=OJ:L:2017:154:TOC))).

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