Tecnica Group S.p.A. a large Italian sportwear company which primarily deals in Alpine sports apparel for skiing and hiking, has lost its appeal against an EUIPO cancellation decision regarding its Moon Boot brand.
The original cancellation decision declared that the Moon Boot trade mark, which is a three-dimensional mark, was invalid in part for goods listed under class 25, namely footwear.
This dispute considers, amongst other things, the main principles of what constitutes a ‘distinctive’ character of a trade mark under Article 7 (1) (b) EUTMR.
Moon Boots are a well-known set of après-ski boots that were first launched by Tecnica in 1970 and were inspired by the Apollo 11 moon landing. It remains one of their most iconic and best-selling products.
Tecnica filed an application to register its 3D mark on 2 August 2011 in classes 18, 20 and 25 which was published on 9 December 2011 (Mark). On 17 May 2017, Swiss wholesaler Zeitneu GmbH requested the court make a declaration of invalidity for the Mark on the grounds that, inter alia, the Mark is not distinctive enough as the general ‘L’ shape of the Moon Boot is like that of other après-ski- boots and uses similar materials, such that the relevant public (i.e. average consumers of après-ski boots) would see the Moon Boot as a variant on a commonly used après-ski boot.
Tecnica argued that the shape had been used by the company for over 40 years before the Mark was registered and competitors have attempted to “usurp the EUTM proprietor Moon Boot shape and name”. Further, Zeitneu did not prove that the relevant consumer would make assumptions about “the origin of products on the basis of their shape or the shape of their packaging in the absence of any graphic or word element”.
The main question the court had to grapple with was whether the Mark had sufficient distinctive character in ‘footwear’ (part of class 25).
The cancellation decision of the EUIPO noted that it “is not enough for the shape to be just a variant of a common shape or a variant of a number of shapes in an area where there is a large diversity of designs” and held that the Mark was not distinctive enough (for the purposes of Article 7 (1) (b) EUTMR) to be registered under the following categories of class 25: Footwear, Footwear soles; Insoles; Heelpieces for footwear; Footwear uppers.
The decision, dated 28 March 2019, can be found here (by clicking on link ‘Cancellation decision 000014989).
Board of Appeal Decision
On 15 May 2019, Tecnica appealed the decision on the grounds (amongst others) that the cancellation decision was wrong to find the shape as a mere variant of a number of shapes and evidence had been overlooked and misconstrued.
Zeitneu countered that there were, in fact, many other similar or identical shapes not owned by Tecnica that were on the market before the Mark had even been filed, such as boots by Chanel and Chloé. Zeitneu also argued that Tecnica had not taken any action against the aforementioned companies (as well as others).
Further, Zeitneu argued that there was insufficient evidence to show that the Mark is a reputed mark.
The Board of Appeal sets out at paragraph 26 of the decision the important factors to consider when analysing whether a trade mark is devoid of distinctive character or not. It was noted that the shape of the Mark would have to diverge “appreciably from the shape that is expected by the consumer” for it to attract distinctiveness, and the Mark did not pass through that particular hoop. The Board also found, at paragraph 77, that the originality of a shape does not mean that the shape necessarily indicates the “commercial origin of the products themselves”. As such, the Board of Appeal affirmed the original cancellation division decision.
The appeal decision can be found here (by clicking on link ‘010168441’).
Previous Decisions in Italian Courts
Tecnica attempted to support the appeal by referring to its legal action (relating to trade marks) in the Italian courts against Zeitneu in 2016 (No 3143/2016) and 2019 (No 851/2019).
These decisions held that the Moon Boot shape was a reputed mark. The Board of Appeal confirmed that, whilst under an obligation to review such decisions, it was under no obligation to agree with or implement such decisions as the “EU trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it” – see paragraph 79 of the Appeal decision.
Tecnica was successful in its copyright claim against another manufacturer of après-ski boots, named “Anouk”, which was owned by the Italian shoe company Anniel.
The Italian court found for Tecnica, declaring that the Moon Boot qualified for protection under Article 2 No 10 of Italian Copyright Statute and that the brand had not fallen into the public domain (as the Appeal decision held) as Tecnica had demonstrated that it had made numerous efforts to prevent the copying of the Moon Boot and that it was an icon of Italian design with artistic value.
This is a good example of how different avenues of IP law can be chosen (simultaneously) to defend/make a claim, with different degrees of success. As can be seen, there is an intricate overlap of copyright and trade marks in this case.
The Board of Appeal confirmed that the Moon Boot shape was not distinctive as it is not enough for a shape to be aesthetically pleasing for it to be considered distinctive, contrary to the Copyright decision, as well as previous decision involving both Zeitneu and Tecnica.
It also shows the inherent difficulties involved with a three-dimensional mark in achieving a distinctive shape.