Believe it or not but the “Moon Boots” cannot be an EU trademark

The Italian company Tecnica Group S.p.A. successfully registered in 2012 the following European 3D trademark:

The specified classes are:

Class 18 – Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins hides; trunks and traveling bags; umbrellas, parasols and walking sticks; whips, harness, and saddlery; casual bags, handbags, travel baggage, bags for climbers,
schoolbags, bags for campers, sport bags, backpacks, suitcases, coin pouches, pouches;

Class 20 – Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics; armchairs and divans;

Class 25 – Clothing, footwear, headgear; footwear soles; insoles; heelpieces for footwear; footwear uppers.

In 2017, Zeitneu GmbH filed a request for a declaration of invalidity of this trademark based on absolute grounds – lack of distinctive character.

The EUIPO canceled the trademark. Although this “Moon Boots” were been introduced 40 years ago, their registration was sought in 2012. Meanwhile, some other companies started to offer similar products.

From that perspective, the EUIPO considers the L shape of the boots as a traditional one, which is not so different from the general shape of boots.

Tecnica Group stated that their sign is recognized as a trademark with a reputation in Italy but the EUIPO reminded that this decision was not binding on the EUIPO’s practice because it is a national one.

Another argument by Tecnica Group was the fact that these “Moon Boots” were recognized by the Court in Milan as original work subject matter to copyright protection.

The EUIPO agreed that such footwear can be original but this by itself doesn’t mean that they can serve as a source of trade origin and were distinctive at the moment of filing the trademark application.

Source:  Federica Pezza за IPKat.