The matter at hand
Birkenstock applied for registration as a Community trade mark of a figurative mark that is made up of a series of elements which are repeated regularly, in the sense that they may form a pattern. The public may recognize in the application the pattern used on the soles Birkenstock footwear, but the application provides no information on the envisioned use of the sign. The application pertained to a wide variety of goods, including various medical and orthopaedic apparatus, instruments and products in Class 10, bags in Class 18 and clothing and footwear in Class 25.
EUIPO denied registration of the mark for all the goods concerned on the ground that the mark is devoid of distinctive character (Article 7(1)(b) of Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark). The Board of Appeal concluded, in essence, that the relevant public would in all likelihood perceive the sign as a simple surface pattern and not as an indication of any particular commercial origin.
The General Court considered that it is only when the use of the sign as a surface pattern is unlikely in the light of the nature of the products at issue, that such a sign is not to be considered a surface pattern in respect of those products. On that basis, the General Court annulled the decision of the Board of Appeal regarding some goods in Class 10 (including artificial limbs, eyes and teeth, suture materials and animal skins). However, more importantly, the General Court considered that the Board of Appeal had been correct in applying the case-law relating to signs that are indissociable from the appearance of the goods regarding all other goods (i.e. the case law requiring that a sign, for it to have intrinsic distinctive character, must depart significantly from the norms and customs of the market) – and consequently dismissed the appeal with regard to all these other goods.
Birkenstock lodged an appeal to the ECJ in which it most notably argued that the General Court had incorrectly assumed that the sign was indissociable from the goods for all goods where such use was merely a ‘possibility’, whereas it should only have assumed so where such use was the ‘most likely use’ of the sign.
The judgment of the ECJ
In addressing this ground of appeal, the ECJ refers to the case law in which the criteria have been laid down for assessing the distinctive character of three-dimensional marks consisting of the appearance of the product itself (such as Mag Instrument, C-136/02 P), signs consisting of a design applied to the surface of a product (such as Glaverbel, C‑445/02 P) and signs where only a part of the designated product is represented by the mark (such as Louis Vuitton Malletier, C‑97/12 P). In this case law, the ECJ has consistently held that, although the criteria for assessing the distinctive character of these types of marks are no different from those applicable to other categories of marks, the average consumer’s perception is not necessarily the same for these different types of marks – resulting in the well-known criterion that such marks only possess intrinsic distinctive character when they ‘depart significantly from the norm or customs of the sector’.
With reference to this case law, the ECJ concludes that the General Court had rightly held that “the decisive element as regards the applicability of the case-law relating to three-dimensional marks that are indissociable from the appearance of the goods is not the categorisation of the sign in question as a ‘figurative’ sign, be it ‘three-dimensional’ or otherwise, but rather the fact that it is indissociable from the appearance of the product designated” (paragraph 36).
The ECJ then goes on to assess whether the General Court should only have concluded that the trade mark applied for by Birkenstock was indissociable from the appearance of the goods where the use of the mark as a surface pattern was the ‘most likely’ use of that sign – and not merely (as the General Court did) where the use as a surface pattern was merely ‘possible, and not unlikely’.
In this regard, the ECJ concludes that, “by using the criterion of the possible, and not unlikely, use of the sign as a surface pattern the General Court has in no way erred in law” (paragraph 40). To substantiate this finding, the ECJ inter alia considers that “in view of the intrinsic characteristics of the sign at issue, which is made up of a series of elements which are repeated regularly, and the nature of the goods covered, that sign is, in principle, intended to be affixed to the surface of those goods [and that] there is an inherent probability that a sign consisting of a repetitive sequence of elements will be used as a surface pattern and thus will be indissociable from the appearance of the goods concerned” (paragraphs 40 and 41).