K-swiss 5-stripe trade mark held invalid

A key question for the court was whether the 5-stripe mark is indistinguishable from the appearance of the product designated or whether it is independent of it.

Since the mark comprised a two-dimensional representation of the shape of a shoe with five parallel stripes on its side, the court held that it cannot be disassociated from the products designated (ie, shoes). It was therefore appropriate to consider case law dealing with similar marks (eg, shape marks and marks comprising two-dimensional representations of products such as a sweet in a wrapper).

Shape as an indicator of trade origin

The relevant case law holds that such marks are incapable of registration unless they depart significantly from the norm or customs of the sector. This is understandable when considering a mark like the shape of a MAGLITE torch which was previously refused registration: although most consumers will recognise a MAGLITE torch as such, its basic design is very similar to most other torches (a long handle and a bulbous end from which light is emitted). It does not depart significantly from the standard shape of most other torches, and therefore consumers will arguably not rely on the shape as an indicator of origin. It is difficult to see how such an argument is relevant to two-dimensional designs such as geometric shapes, patterns or lines where there is not so obviously an industry 'norm'.

K-Swiss contended that its mark was a 'position mark', despite the registration not containing any indication to the effect that it comprises only the five parallel stripes, and that the shoe surround merely gives an indication of the positioning of the stripes on the product. The court held that even if the mark were limited to the five stripes (as positioned on the side of shoes), it is nevertheless presented as a design intended to be placed on part of the products designated – thus it is indistinguishable from the appearance of those products (and the case law noted above is still applicable).

In addition to the requirement that a mark comprising a design applied to the surface of a product must depart significantly from the norm or customs of the sector, the court held that the sign must also be independent of the appearance of the product it designates (otherwise consumers may see it as merely decorative). The fact that the K-Swiss registration did not include a verbal indication noting that the registration covered the mark as applied to the sides of shoes was not necessarily determinative, but it did not help its case. Nevertheless, the court seems to be saying that the fact that a sign is intended to be a 'position mark' is not a valid argument that will assist in claiming inherent distinctiveness.

K-Swiss argued that consumers are accustomed to seeing simple signs comprising lines or stripes placed on products as designating trade origin within the sports and leisure shoe sector.

The Board of Appeal had held that consumers would not understand geometric patterns applied to the side of shoes as indicators of trade origin unless they had been educated to do so through intensive use as such.

The fact that some signs placed on the side of shoes had acquired distinctive character through use did not suggest that consumers had learned to establish a link between any sign placed on the side of a shoe and a particular manufacturer.

Questions raised by this case

The decision confirms a recent trend both at the GC and OHIM of making it more difficult to register marks such as these. In particular, further guidance would be welcome on the question of when a mark may be considered indistinguishable from the appearance of the products it covers: many trade marks and logos are applied to products in some form of other (eg, the NIKE swoosh on T-shirts). To what extent can it be said that such marks should be treated in the same way as the K-Swiss 5-stripes sign? A high hurdle has been set for trade mark owners – it will be interesting to see if a final appeal is made to the CJ.