24. Mar 16

ECJ: Two side stripes on sports shoe not a Community trademark

Two parallel stripes on the sides of a sports shoe cannot be registered as a Community trademark. This comes from a ruling of the European Court of Justice (ECJ) dated February 17, 2016.

GRP Rainer Lawyers and Tax Advisors in Cologne, Berlin, Bonn, Düsseldorf, Frankfurt, Hamburg, Munich, Stuttgart and London conclude: With this ruling, the ECJ has ended a longstanding trademark dispute concerning the registration of two parallel stripes on the sides of a sports shoe as a Community trademark (Az.: C-396/15 P).

In 2009, a Belgian manufacturer applied to register two parallel stripes on the sides of sports shoes as a Community trademark at the Office for Harmonization in the Internal Market (OHIM). A German manufacturer of sports goods objected to this application, referring to its own trademark with three stripes. While it was unsuccessful before the OHIM, the German company’s legal action did, on the other hand, succeed before the General Court of the European Union (EGC). The EGC concluded that the trademarks were both visually similar. The elements that they manifestly had in common, such as the identically spaced stripes on the sides contrasting with the primary colour of the shoes, were said to create a similar overall impression. The Court therefore held that registration as a Community trademark was not permissible.

This approach was then confirmed at the next judicial level by the European Court of Justice. It was said that there were only minor differences between the trademarks with respect to their length and the angle of the stripes. The Court went on to state that these did not change the overall impression resulting from the stripes on the shoe, and to this extent the trademarks lacked the necessary distinctiveness. The length and number of stripes were not sufficient to cast doubt on the similarity of the trademarks at issue.

Trademarks help businesses to improve their products’ brand recognition among consumers. The more well known a trademark is, the higher its estimated value. It is therefore all the more important to protect trademarks by registering them. In doing so, one needs to draw a distinction between trademark registrations for the respective national market and Community trademarks that are valid throughout the European Union. Registering a trademark requires careful preparation. Moreover, a trademark cannot infringe the rights of third parties.

Companies can turn to lawyers who are competent in the field of trademark law for assistance in enforcing or fending of claims should trademark violations occur.

For more informations: http://www.grprainer.com/en/legal-advice/intellectual-property-law-and-trademark-law/trademark-law.html

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