October 2, 2018

Surface pattern: Court of Justice of European Union dismisses appeal by Birkenstock in relation to the international registration of its figurative “surface pattern” mark.

Facts

The claimant, Birkenstock Sales GmbH, appealed the decision of the General Court (GC) in relation to its international registration designating the EU of a figurative mark representing a pattern of wavy, crisscrossing lines, as follows:

The mark had been obtained, on the basis of a German trade mark, and the goods for which extended protection was sought were in classes 10 (including “Surgical, medical, dental and veterinary apparatus and instruments”), 18 (including “Leather and imitations of leather”) and 25 (including “Clothing, headgear, footwear”).

EUIPO had refused the registration on the basis of lack of distinctive character for all goods concerned under Article 7(1)(b) of the Trade Mark Regulation (207/2009/EC). The Board of Appeal had also dismissed Birkenstock’s appeal for the same reason.

Before the GC, Birkenstock argued infringement of Article 7(1)(b), submitting that the Board of Appeal had not examined the mark in its registered form, i.e. an image with a clearly delimited surface that was not indissociable from the shape of the goods, and had unjustifiably expanded the sign by asserting that it could be reproduced and continued.

Examining relevant case law, the GC found that it was only when the use of a surface pattern was unlikely in the light of the nature of the products concerned that such a sign might not be considered a surface pattern only (i.e. not to function as a trade mark) . It found that the Board of Appeal had been wrong to apply the case law concerned to some of the products in class 10, but had been correct to apply it to all the other goods in all the classes. It therefore only partially dismissed Birkenstock’s appeal.

CJEU judgment

On appeal to the CJEU, Birkenstock argued that the GC had erred in law by using the criterion of a mere “possibility” that the sign might be used as a surface pattern in order to apply the case law on signs that were indissociable from the appearance of the goods. Instead, Birkenstock said, the GC should have used the criterion of the “most likely use” of the sign as a surface pattern (Deichmann v OHIM EU:C:2012:254).

The CJEU disagreed with Birkenstock. By using the criterion of the possible, and not unlikely, use of the sign as a surface pattern, the GC had not erred in law, it said.

Given the intrinsic characteristics of Birkenstock’s sign, which was made up of a series of elements which were repeated regularly, and the nature of the goods covered, the sign was, in principle, intended to be affixed to the surface of the goods. There was therefore an inherent probability that it would be used as a surface pattern and would therefore be indissociable from the appearance of the goods.

The CJEU said that the situation in Deichmann, in which the CJEU had used the “most likely use”, was not relevant here as that case did not concern the registration of a sign made up of a repetitive sequence of elements, but a sign representing a curved band with dotted lines.

In addition, using the criterion of the “most likely use” would mean that signs that lent themselves well to being used as a surface pattern by reason of their intrinsic characteristics, could avoid the case law on marks that are indissociable from the appearance of the goods being applied to them, even if there was an inherent probability that they would be used as a surface pattern and would therefore be indissociable from the appearance of the goods.

Birkenstock also argued that the GC had applied stricter criteria than those set out in Article 7(1)(b) when it considered that the overall impression produced by the sign was banal and that surface patterns were often simple geometrical shapes such as spots, circles, rectangles or lines.

The CJEU ruled that this argument was inadmissible as, essentially, Birkenstock was calling into question the findings of fact made by the GC. In other words, Birkenstock was seeking to obtain a fresh assessment of the sign.

The CJEU also dismissed Birkenstock’s various other arguments due to them being: i) based on a misreading of the GC judgment; or ii) inadmissible; or iii) unsupported by evidence.

Birkenstock’s appeal was dismissed in its entirety. (Case C-26/17 Birkenstock Sales GmbH v European Union Intellectual Property Office [2018] EUECJ C-26/17P (13 September 2018) — to read the judgment in full, click here).