Skechers lost a trademark dispute in the EU

The US-based footwear company Skechers lost a case T‑598/20 before the General Court of the European Union.

The dispute at hand concerns an application for a European trademark ARCHFIT in class 25 – Footwear.

The EUIPO refused to register this sign based on absolute grounds Article 7(1)(b) and (c) of Regulation 2017/1001 – descriptiveness and lack of distinctiveness.

The decision was appealed. According to Skechers, the Office erred in its assessment because the sign could have more than one meaning. What’s more a similar mark EXACT FIT was registered as an EU trademark in classes 18 and 25 overcoming an initial refusal.

The General Court, however, dismissed the appeal finding the EUIPO decision as correct in the light of the particular circumstances.

According to the Court:

 In the present case, in the first place, in the context of footwear, the average consumer, who is reasonably well informed and reasonably circumspect, in the relevant public, namely the English-speaking general public, will perceive the element ‘arch’ as relating to the ‘raised part of the foot formed by a curved section of bones’. That meaning is one of the basic – that is to say, not remote or nuanced – meanings of that word, as is apparent from the online dictionary for English learners that can be consulted at the following address: https://www.oxfordlearnersdictionaries.com. When confronted with the word ‘arch’ designating footwear, the English-speaking general public will not engage in an analysis for the purpose of verifying, on its part, whether other meanings of the word ‘arch’ could also be chosen. In connection with footwear, that public will not hesitate to associate that word with the human foot.

As for the element ‘fit’, the English-speaking general public will understand it as a verb referring directly to the meaning of the terms ‘be the right shape and size for somebody/something’, in accordance with one of the first meanings of that verb set out in the online dictionary referred to in paragraph 39 above. This is a common and obvious meaning that will come to mind naturally and without further thought for the relevant public. The element ‘fit’ could also be perceived by the relevant public as a common noun referring, in the circumstances of the present case, to the meaning of the terms set out in the online dictionary referred to in paragraph 39 above, the ‘way that two things match each other or are suitable for each other’, such as in the expression ‘a perfect fit’. The average consumer, who is reasonably well informed and reasonably circumspect and part of the English-speaking general public will rule out any other meaning of the element ‘fit’ in the circumstances of the present case. More specifically, he or she will not think of the meaning that ‘fit’ has in, for example, the expressions ‘a fit of laughter’ or ‘epileptic fit’.

Without there being any need to ascertain whether, in the mark applied for, the word ‘fit’ will be perceived as a verb or a common noun, it must be stated that, as the Board of Appeal stated correctly of the contested decision, the combination of the words ‘arch’ and ‘fit’ will be understood by the English-speaking general public as an indication that the footwear designated by the mark applied for is designed specifically to fit the arch of the user’s foot.

The fact that the footwear fits or must fit the foot, the raised part of the human foot called ‘the arch’ in particular, must be regarded as the description of one of the characteristics which is objective and inherent to the nature of those goods and intrinsic and permanent with regard to those goods, within the meaning of the case-law cited.

In the second place, it must be borne in mind that, according to case-law, if a mark which consists of a word produced by a combination of elements is to be regarded as descriptive, it is not sufficient that each of its components may be found to be descriptive. The word itself must be found to be descriptive (judgment of 12 February 2004, Koninklijke KPN Nederland, C‑363/99, EU:C:2004:86). This applies mutatis mutandis to an expression which is merely a combination of word elements. Moreover, it must be borne in mind that, as a general rule, a mere combination of elements, each of which is descriptive of characteristics of the goods or services in respect of which registration is sought, itself remains descriptive of those characteristics. Merely bringing those elements together without introducing any unusual variations, in particular as to syntax or meaning, cannot result in anything other than a mark consisting exclusively of signs or indications which may serve, in trade, to designate characteristics of the goods or services concerned (judgment of 12 February 2004, Koninklijke KPN Nederland, C‑363/99, EU:C:2004:86).

In the present case, not only are the terms ‘arch’ and ‘fit’ capable, in themselves, of communicating a descriptive message relating to footwear, but so is their combined use. Taken as a whole, the grammatical structure of the expression ‘arch fit’ is not so unusual as to lead to a finding that it modifies the message communicated by each of those elements by itself in the context of footwear.

In the third and last place, it must be found that, in the present case, the link between the mark applied for and the goods in question, namely footwear, is sufficiently direct and specific, within the meaning of the case-law cited in paragraph 28 above, for the relevant public immediately to perceive, without any particular mental effort, that mark as the description of one of the characteristics of those goods. For the English-speaking general public, the message communicated by ‘arch fit’ in connection with footwear will be unambiguous, as the words comprising that expression will be understood in accordance with one of their basic meanings and that expression does not contain any grammatical or semantic peculiarities likely to modify those basic meanings.

Crocs’ footwear with trademark problems in Sweden

In 2018 Crocs Inc. filed the following three-dimensional trademark in Sweden for class 25 – footwear:

Initially the Patent Office refused to register this mark on absolute grounds. Crocs submitted evidence for acquired distinctiveness which resulted in a successful registration.

The Swedish discount store ÖoB was selling similar products between 2014 and 2019.

Because of this Crocs Inc. initiated a lawsuit proceeding for trademark infringement. As a counter attack ÖoB asked for invalidation claiming that the Crocs’ trademark was not distinctive, it consists exclusively of a shape, which resulted from the nature of the goods themselves and a shape necessary to obtain a technical result.

The Swedish Patent and Market Court dismissed the claim for trademark infringement and invalidated the Crocs’ mark. The arguments for this decision was that the mark represents a footwear with the following characteristics 1) holes on the top 2) holes on each side 3) the heel strap 4) flat rivets, and 5) wide toe-area. Every of these characteristic could be attributed to the basic functions and properties of this type of footwear. It therefore concluded that the shape of the mark was the result from the nature of the goods themselves and the shape of goods was also necessary to obtain a technical result because the holes provides a better ventilation and enabled water to drain out.

The decision was appealed.

The Swedish Patent and Market Court of Appeal disagreed with the Court of first instance. According to the court the shape of such a footwear can be designed in different ways not only in that particular. The size, holes and overall design can be accomplished in many different ways. Because of this it cannot be assumed that the shape is a result from the nature of the goods.

The court considered that ventilation and draining a water out, in the particular case, can not be views as a technical function.

Nevertheless, the Court invalidated the Croc’s mark based on a lack of distinctive character. According to the Court, the evidence for acquired secondary meaning provided by Crocs mainly show significant sales figures but there is no information on how exactly consumers perceived the shape of the product and whether this perception is related to a sign of trade origin.

The Court considered the market survey from 2008 provided by the company as insufficient. The respondents in this survey associated the footwear with “Foppatoffeln” a name that is related to the hockey player Peter Forsberg who suffered from a heel injury, prompting him to wear the Crocs footwear on TV and in other public contexts. Only 7% of them related the product shape with Crocs as manufacturer while 46% suggested that the footwear could originate by any manufacturer. The survey didn’t include an option for an answer “do not know”, which ruined its credibility up to a point.

The advertisement campaigns with this footwear included the Crocs name and the depiction of crocodile too. The Court considered this as another evidence that consumers perceived the shape as a product characteristic not as a trademark.

Source: IPKat.

Puma lost a dispute against Nike for the FOOTWARE trademark in the UK

Puma lost an opposition against trademark FOOTWARE for classes 9, 38, 42, filed by Nike in the United Kingdom.

According to Puma this sign is obvious misspelling of the word FOOTWEAR which has particular meaning related to shoes.

From that perspective the mark applied for is not distinctive and it is descriptive even for the specified goods and services because it can be perceived, for example, as a software used in relation to footwear.

Nike response was that the sign was distinctive enough. The WARE part has been already registered as a separate trademark for the same classes. On top of that Puma themselves owns a trademark SPORTSWEAR.

The UK Patent Office dismissed the opposition stating that there were no sufficient evidence that the word FOOTWARE can be understood in a descriptive way for the specified goods and services.

What’s more, the way how it is spelled requires additional considerations from the consumers in order they to get the meaning of the word Footwear.

This case is an example about the so-called suggestive trademarks which meaning is not direct but requires additional intellectual efforts from the consumers to be determined. In some cases these marks can receive protection.

Source: Charlotte Wilding – Kemp Little LLP за Lexology.