Decision Tips on Lack of Distinctive Character
Obtaining registration for ‘unconventional trade marks’, such as colours, shapes, sounds or smells, is notoriously difficult; a common reason for refusal being that such marks lack distinctive character.
To be distinctive and fulfil its essential origin function, a mark must depart significantly from the norms and customs of the relevant sector (C-456/01 P and C457/01 P Henkel v OHIM  E.C.R. I-5089). Filing evidence of acquired distinctiveness through use is helpful in overcoming this hurdle.
A useful reminder of the prevalence of this issue can be seen in a decision of the General Court (GC) dated 11 July 2013, T-208/12 Think Schuhwerk GmbH v OHIM  unpublished. The applicant, an Austrian shoe company by the name of Think Schuhwerk GmbH, applied for a CTM for shoes with laces with red tips (aglets) on the ends of shoelaces in class 25.
The examiner refused registration on the basis that the mark was devoid of distinctive character within the meaning of Article 7(1)(b) of the Community Trade Mark (CTMR); this was upheld by the Board of Appeal (BoA), who considered that use of red tips on the ends of shoelaces did not produce a significantly different impression from the normal design of lace-up shoes and that consumers would perceive the mark as a variant in shoe design, not as an indicator of origin. In an appeal to the GC, the applicant put forward four pleas, arguing violations of Articles 75 and 76 CTMR; misapplication of Article 7(1)(b); and also violation of the principle of equal treatment.
The GC rejected the plea under Article 75, that the applicant had not had an opportunity to comment on the BoA’s reasoning in relation to Article 7(1)(a), because it was irrelevant given that the decision had turned on Article 7(1)(b).
While the applicant acknowledged that shoes and shoelaces exist in various forms and colours in the market, their argument that the BoA had not stated the reasons for its decision was rejected by the GC, who deemed such argument to be more in relation to the substantive issue of whether the sign had distinctive character, not a lack of reasoning.
Further, the GC also rejected the applicant’s argument based on Article 76, finding that when examining distinctiveness, the BoA may base its analysis on facts arising from practical experience generally acquired from the marketing of the product concerned to ascertain that the average consumer would not consider the sign as an indicator of origin, and the BoA does not need to cite specific examples of such practical experience. Notably, the applicant did not provide evidence to prove that the relevant public would consider the red tips as an indicator of origin. The GC also highlighted that originality and novelty were not decisive factors when assessing a mark’s distinctive character.
In response to the applicant’s plea that the BoA had misapplied Article 7(1)(b), the GC reasoned that the case law in relation to this issue and applicable to 3D and figurative marks, that average consumers are not in the habit of making assumptions as to the origin of goods based on the appearance of products unless the sign departs significantly from the norms or customs of the sector, applies in this case for the key reason that the red tips are not independent of the shape of the shoelaces as they ‘merge’ with the appearance of the designated product. The GC rejected the applicant’s assertions that red tips on shoelaces are rare and considered that consumers had an average level of attention in relation to this product. Moreover, the GC rejected the applicant’s argument that there was no public interest in preventing a monopoly over the colour red for tips of shoelaces.
Finally, the GC found there was no violation of the principle of equal treatment.
This decision provides a useful reminder to applicants for non-traditional trade marks, of the importance of filing sufficient evidence of acquired distinctiveness through use, to support the argument that the sign serves as an indication of trade origin to consumers.