An appeal heard before the CJEU regarding an attempt by Birkenstock to register a surface pattern sign (see above) used on its sandal products has been unsuccessful. The CJEU upheld the decision of the lower General Court.
Background
Birkenstock is a famous German shoe brand known for its range of sandals and other footwear featuring an anatomically shaped "footbed", made from cork and rubber. The underside of Birkenstock’s shoes often feature a figurative sign comprising of a pattern of wavy, crisscrossing lines (the "Sign").
In June 2012, Birkenstock obtained, on the basis of a German trade mark, an international registration for the Sign covering:
- Class 10 (including medical apparatus including orthopaedic footwear and shoe fittings for orthopaedic shoe adaptation);
- Class 18 (including leather and imitations of leather); and
- Class 25 (including clothing, including footwear such as comfort shoes and sandals).
EUIPO considered that the EU designation of the Sign lacked any distinctiveness for all of the goods concerned.
On appeal by Birkenstock, the EUIPO's Board of Appeal upheld the decision on the basis that the Sign displays wavy lines crisscrossing at right angles in a repetitive sequence that could extend in all four directions of the square and could therefore be used on any 2D or 3D surface. The Sign would thus be perceived as representing a surface pattern and be incapable of being dissociated from the appearance of the goods in question. The Board of Appeal also concluded that the Sign is "banal" and that the public would likely perceive it simply as a surface pattern, rather than an indication of any particular commercial origin.
Appeal to the General Court
On appeal in 2014 to the EU General Court, Birkenstock contended that the Board of Appeal had not examined the Sign in its registered form, i.e. an image with a clearly delimited surface that was not indissociable from the shape of the goods.
The General Court held that it is only when the use of a surface pattern is unlikely in the light of the nature of the products in the specification that such a sign may not be considered a surface pattern in respect of those products. Therefore, the Board of Appeal had been wrong to apply its decision to ‘artificial limbs, eyes and teeth’, ‘suture materials; suture materials for operations’ and ‘animal skins, hides’.
However, the General Court held that the Board of Appeal had been correct to apply its reasoning to the other goods within those classes. It held that the use of the Sign as a surface pattern was not 'unlikely' for those goods. The General Court recognised that consumers are unlikely to assume the commercial origin of a product on the basis of signs that merge with the appearance of that product. This includes the use of the Sign on Birkenstock’s products.
Appeal to CJEU
Birkenstock proceeded to appeal to the CJEU. In its judgment given on 13 September 2018, the CJEU dismissed Birkenstock's appeal in its entirety.
The CJEU examined whether a figurative sign composed of a series of regularly repeating elements may be regarded as a surface design for the goods concerned. The decisive factor in that regard is not the classification of the sign in question as a “figurative sign”, a “three-dimensional sign” or any other sign, but the fact that it fuses with the appearance of the product.
Given the characteristics of the Sign, being a series of elements that are repeated regularly, and in light of the goods covered, the CJEU concluded that the Sign is intended to be affixed to the surface of goods. It would therefore most likely be used as a surface pattern and be indissociable from the appearance of those goods.
Conclusion
The case suggests that whilst it is possible for surface patterns to be protected as trade marks, this will not be possible if a sign is essentially a feature of the product and where it cannot be disassociated from that product. The CJEU has made it clear that proof would be required that any sign that is fused with a product deviates considerably so as to be capable of separate registration.
Case C-26/17P
