The famous Italian clothing company, Loro Piana S.p.A, has recently faced a refusal from the European Union Intellectual Property Office (EUIPO). This refusal concerns Loro Piana’s attempts to register a position mark for shoes and footwear in Class 25. A position mark protects the specific manner in which the trade mark is placed on or affixed to a product.
The decision serves as a timely reminder to brand owners of the difficulties associated with registering unconventional trade marks including position marks. In order to be protected, position marks must be highly distinctive to ensure they do not represent common design practices. We analyse the decision and its impact for brand owners in the fashion sector.
Background
Loro Piana S.p.A filed an EU trade mark (EUTM) application for the position mark below in June 2023.
The application sought protection for “shoes” “loafers” “babouche” and “sabot” in Class 25. Loro Piana specified in the description of the mark that:
“The position mark consists of the combination of band and knuckle and ribbon and metal pendants, one in the shape of a padlock, the other in the shape of a ferrule (such pendants are typical of Loro Piana), which, as a whole, is applied to the upper mask covering the upper part of the foot, in whole or in part, and always positioned closer to the tongue than to the toe of the shoe. The dotted lines are not part of the position mark, but serve only to indicate the position and proportions of the mark in relation to the shoes on which it is applied.”
Initial objection
The EUIPO raised an objection, in August 2023, on the basis that the application is devoid of distinctive character. The EUIPO justified this objection for the following reasons:
- Regarding a positional mark, consideration must be given to whether the relevant consumer will be able to identify a sign as being different from the appearance of the goods themselves. Additionally, it must be considered whether the position of the sign on the goods is likely to be understood as a trade mark.
- The application consists only of a set of presentation features of a purely decorative nature. These features do not allow the origin of the claimed goods to be identified. It is common practice to place decorative elements on the uppers of shoes. The application is just one variant of the many variants existing on the market, which adopt more or less simple decorative elements, alone or in combination with each other.
- In this case, the location of the sign as well as its representation, do not deviate significantly from the standard or the customs of the relevant industry. Specifically, the application consists merely of a knotted and ribbon band with metal pendants affixed to the upper mask.
- The EUIPO Examiner relied on the below online search results. The search results illustrate that the presence of knot ties and ribbons with pendants affixed to shoes, loafers and sabots are common in the target market.
Loro Piana’s arguments
In response, Loro Piana S.p.A cited a number of third party position marks which had been registered for footwear.
For example, Gucci had successfully registered a 3D trade mark for the following sign protecting shoes in 2005.
In 2014, Hermes successfully registered a 3D trade mark for the following sign again protecting shoes and other goods.
In addition, the applicant pointed out that pendants padlocks and ferrule are protected as 3D trade marks before numerous trade mark offices around the world. Lastly, it pointed to numerous counterfeit versions of its products on the global market. This was done to argue that its position mark is a distinctive sign, which is recognisable by the relevant public.
EUIPO decision
The EUIPO upheld the Examiner’s initial objection and rejected the application. It held that determining whether or not the position mark is distinctive depends on the perception of the relevant public. In this case, the relevant public would not perceive any diversity or distinctiveness in the design of the mark applied for when compared with market norms and customs. This was particularly the case where the mark should have a distinctive and not merely decorative value.
With regard to the previous decisions and similar registrations such as the EUIPO Board of Appeal decision in October 2023 to annul the initial refusal to register a position mark for footwear, the EUIPO noted that these were irrelevant. They stated “each case must be dealt with separately and according to its own peculiarities.” The fact that the sign had been used on the marketplace for a prolonged period did not speak to its inherent distinctiveness or how it would be perceived and understood by actual consumers. Similarly, the mere fact that the outward appearance of a product is copied by counterfeiters does not necessarily mean that the appearance is trade mark protected.
Comment
Loro Piana may decide to appeal the EUIPO’s decision before the imminent appeal deadline of 26 June 2024. Therefore, we may not have yet reached the end of the matter. That said, position mark disputes and examination difficulties do not tend to arise in the EU as often as other types of unconventional trade marks. The decision is therefore interesting for brand owners. Of particular note is the EUIPO’s clarification that position marks are similar to the categories of figurative and 3D trade marks. These marks have as their object the application of figurative or 3D elements to the surface of a product. However, the qualification of a position mark as a figurative or 3D trade mark, or as a specific category of marks, is irrelevant when assessing its distinctiveness. The key point for brand owners is to be able to demonstrate, through the filing of evidence if necessary, that their position marks are highly distinctive. In the clothing, footwear and fashion industries which tend to have crowded markets with decorative elements, this is arguably a high bar to meet for brand owners.
For more information and expert advice, contact a member of our Intellectual Property team.
The content of this article is provided for information purposes only and does not constitute legal or other advice.
