Iconic Moon Boot shape lacks distinctiveness…

…according to the EU General Court, despite the fact that over 20 million pairs have been sold, and they have even been displayed in museums such as the Louvre.

The 3D shape of the boot was registered in 2012 by Tecnica Group as an EU trade mark.

During proceedings before the courts of Venice, Zeiteneu, a German company, failed to secure a declaration of non-infringement in the Moon Boot shape trade mark. Zeiteneu went on to file an application with the EU Intellectual Property Office (EUIPO) to invalidate the Moon Boot shape mark. The EUIPO declared that the mark was partially invalid, on the basis that there was a lack of distinctiveness for class 25 goods (which includes after ski boots).

Tecnica appealed this partial invalidation. The General Court assessed the distinctiveness of the Moon Boot shape with respect to class 25 goods. The court stated that, in practice, average consumers do not normally assume the origin of a product based on its shape where there is no word or graphic element present, and it is therefore more difficult to demonstrate distinctiveness in relation to a 3D mark as opposed to a 2D word or figurative mark.

The relevant question for the court was whether the overall impression caused by the shape of the Moon Boot departed significantly from the norms and customs of the after ski footwear sector, so as to fulfil the distinctiveness requirement. It was concluded that the shape did not depart significantly from the normal shape expected of an after ski boot.

Comment

This finding highlights the difficulties one faces when registering shape trade marks. The applicable test is whether the shape departs significantly from what is considered normal in the relevant sector.

Despite the finding that the shape mark was partially invalid, the Italian courts have found on separate occasions that the shape of the Moon Boot benefits from copyright protection. This unregistered right is therefore a useful tool when seeking to enforce rights in a 3D product. Copyright protection gives the copyright owner the exclusive right to copy and distribute the work for a period of 70 years from the death of the author.

Although shape marks can be difficult to register, trade marks do have strong benefits, including that they provide protection forever (subject to use requirements and the mark becoming generic). It is therefore still well worth registering a trade mark if it is possible to do so, to gain the best protection and avoid relying purely on unregistered rights.

Briffa can advise on all aspects of trade mark registration, invalidation and enforcement, as well as copyright and other IP rights.