Not long ago this blog posted an article about the problems of the Italian company Tecnica Group S.p.A. to defend its European three-dimensional trademark in class 25: Clothing, footwear, headgear; footwear soles; insoles; heelpieces for footwear; footwear uppers:
This mark was invalidated by the EUIPO based on absolute grounds – lack of distinctive character.
The Office 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 for the Office’s practice.
The General Court of the European Union dismissed the appeal confirming the EUIPO decision.
The Court reminded that there is a difference between proved reputation and proved distinctiveness. While in the first case the trademark owner can prove reputation only for a significant part of the EU, in the case of acquired distinctiveness this must happen for the entire Union.
In the case of Tecnica Group S.p., they didn’t claim such distinctiveness earlier in the procedure.
Based on this the Court found the shape of the boot as not significantly departing from the industry norms for these types of products. What’s more, there were many similar or even identical boots on the market.
Source: Kluwer IP Law