The Court of Justice of the European Union (CJEU) recently issued a ruling in Case T‑307/23, Jima Projects v EUIPO, invalidating the following EU positioning trademark for footwear:

The trademark, registered in 2002, consisted of a simple design: two oblique stripes placed on the side of a shoe.

An intervener challenged the trademark’s validity, arguing it lacked inherent distinctive character. This legal concept means the mark, in its inherent form, fails to effectively distinguish the goods (in this case, footwear) from those of other companies. Essentially, the mark was deemed too generic or common to serve as a unique identifier for the brand.

The Cancellation Division of the European Union Intellectual Property Office (EUIPO) initially agreed with the intervener, finding the trademark devoid of the necessary distinctiveness. The applicant, however, appealed this decision to the EUIPO Board of Appeal.

The Board of Appeal upheld the Cancellation Division’s ruling, finding that the trademark, with its simple design, did not depart significantly from common design elements used in the footwear industry. The Board concluded that consumers would likely perceive the stripes as a mere decorative element rather than a brand identifier.

The applicant then brought the case before the CJEU, arguing that the Board of Appeal had erred in its assessment. The applicant contended that:

• The Board of Appeal misjudged the level of attention consumers would pay to the trademark. The applicant argued that consumers would pay closer attention to design elements on sports shoes, given the importance of brand image in that market.
• The Board of Appeal failed to properly consider the public’s perception of the mark. The applicant argued that the placement of the stripes on the side of the shoe, a common area for brand markings, would lead consumers to perceive them as an indication of origin.
• The Board of Appeal did not adequately consider earlier EUIPO case law and decisions that, the applicant argued, applied more lenient criteria for assessing distinctiveness.

The CJEU, however, did not find merit in these arguments. The Court emphasized that the trademark’s simplicity and its resemblance to basic geometric shapes were key factors in its lack of distinctiveness. The Court also noted that while many shoe manufacturers use design elements on the sides of their shoes, this practice does not automatically imply that consumers perceive every such element as a trademark.

Furthermore, the Court found that the Board of Appeal had properly considered the relevant case law and industry norms. The Court ultimately upheld the Board of Appeal’s decision, confirming the invalidation of the EU trademark.

Key Takeaways:

• This case highlights the importance of distinctiveness in trademark law.
• Trademarks that are too simple, generic, or commonly used in a particular industry may be deemed invalid.
• The placement of a design element on a product, while a factor to consider, does not automatically guarantee its distinctiveness as a trademark.