EUROPEAN UNION: General Court Clarifies Criteria for the Assessment of Distinctive Character of a 3D Mark

In Hickies, Inc. v. European Union Intellectual Property Office (EUIPO), Case T”‘573/18, handed down on February 5, 2020, the General Court (GC) upheld the EUIPO Board of Appeal (BoA) finding that the mark applied for (as shown below) “is devoid of any distinctive character within the meaning of Article 7(1)(b) of European Union Trademark Regulation 2017/1001 (‘the Regulation’)” and that it does not fulfill the essential function of indicating origin and of distinguishing from the products of other undertakings.

Hickies, Inc. (the applicant) filed an EU Trade Mark application (No. 016952962) to register the shape below, seeking protection for, among others, shoe laces in International Class 26.

The GC concluded that 3D marks consisting of the shape of the product itself are assessed by the same criteria as all other trademarks. This involves a two-step test: first, an assessment “by reference to the goods or services in respect of which registration has been applied for,” and second, “by reference to the perception of the relevant public.” However, the GC underscored that the relevant public perception might differ, as it is not necessarily independent “from the appearance of the product it denotes.” Accordingly, the GC asserted that average consumers do not make assumptions regarding “the origin of goods on the basis of their shape or the shape of their packaging in the absence of any graphic or word element,” which would render establishing distinctiveness in relation to such a 3D mark more challenging than with a word or figurative mark.

The GC dismissed the argument of “novelty” by concluding that the mere fact a product is a “trendsetter,” as the applicant claims it to be, does not necessarily imply distinctiveness for a product whose shape corresponds to the applied-for mark. The GC underlined that design protection would not necessarily imply the mark applied for is distinctive, as they are based on different concerns.

The GC ruled that this shape is merely a variant of a shape known by the relevant public with an average level of attention. Thus, it is not distinctive enough for such public to distinguish it from the products of other undertakings. Moreover, several elements of the shape (for example, the eyelet and button at its ends) were considered to be “purely decorative” or “functional,” hence not distinctive characteristics.

The GC found that the BoA was correct to decide that the mark applied for was devoid of distinctive character.