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Moon Boot – EU General Court upholds finding of partial invalidity of the Moon Boot 3D mark

Last week, the European General Court (EGC) answered this question in the affirmative in its decision in T-483/20 Tecnica Group, concerning trade mark protection of the shape of an icon of Italian fashion design and history: the Moon Boots.

Background

In 2011, Tecnica applied to register the 3D sign corresponding to the shape of its Moon Boots after ski footwear, as an EU trade mark (EUTM) for goods in classes 18, 20, and 25. Registration (No 10 168 441) was granted the following year.

Following proceedings before the courts of Venice in Italy, through which German company Zeiteneu had unsuccessfully sought to obtain a declaration of non-infringement of the Moon Boot shape EUTM, that company filed a request with the European Union Intellectual Property Office (EUIPO) to obtain a declaration of invalidity of the Moon Boot shape mark.

Following a partial declaration of invalidity (lack of distinctiveness for “shoes”) by the EUIPO Cancellation Division, which was upheld by the First Board of Appeal (BoA), a further appeal was filed by Tecnica before the EGC.

The European General Court decision

Beside others, the EGC turned to the assessment of distinctiveness of the Moon Boot trade mark for “shoes”. In this regard, the EGC recalled well-established principles, including the one according to which – for 3D marks and, more generally, less ‘conventional’ signs – the degree of distinctiveness required to obtain (or maintain) registration is in principle no different than that of other, more ‘conventional’ signs.

In practice, however, “the average consumer’s perception is not necessarily the same in the case of a three-dimensional mark, which consists of the appearance of the product itself, as it is in the case of a word or figurative mark, which consists of a sign unrelated to the appearance of the goods it denotes”. Put it differently: “Average consumers are not in the habit of making assumptions about 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, and it could prove more difficult to establish distinctive character in relation to such a three-dimensional mark than in relation to a word or figurative mark”

In practice, all the above means that “only a three-dimensional mark, consisting of the appearance of the product itself, which departs significantly from the norm or customs of the sector” shall be regarded as possessing distinctiveness and be, as a result, registrable.

Ultimately, the Court agreed with the BoA that “the shape of the contested mark corresponds to the common shape of after-ski boots, which generally consist of a high shaft, often in a light synthetic material, with soles and laces.” As such, it would lack distinctiveness, at least for Class 25 goods.

Comment

Last year, in relation to the shape mark Rouge G for lipsticks by Guerlain, the EGC held that less conventional signs are also potentially registrable (ECJ, 14.07.2021 – T-488/20). At that time, the court found that the shape in question meets the criterion of significant deviation and can therefore be registered. Last week’s Moon Boot decision shows again that the criterion of distinctiveness is still held very high on the European level.

Another interesting aspect of the Moon Boot saga is that while the trademark registration was deemed partially invalid, Italian courts have found on several occasions (including in the context of the Venice decisions mentioned above) that the iconic ski boots deserve copyright protection.

Most recently, this was decided by the Court of First Instance in Milan (Trib. Milano, Tecnica Group S.p.A. v. Diana S.r.l., Decision No. 493/2021, Jan. 25, 2021) in a copyright infringement case decided almost a year ago, which Tecnica had successfully brought against the manufacturer of Chiara Ferragni-branded after-ski boots.

In any case, the requirements for trademark registration and copyright are and remain obviously different. Last week’s EGC decision is also an indirect reminder of this truth.

Therefore, it is obvious that a holistic view of IP rights takes place especially across national borders of European member states. MSP has a long-proven network, especially in Europe, to ensure clients a holistic pursuit of their intellectual property interests and to secure national advantages.

Dr. Reta Schinkel               Christian Kröner