CANCELLATION No 37 423 C (INVALIDITY)

Azagroup S.A., Al. Wyścigowa 6, 02-681 Warszawa, Poland (applicant), represented by Jarzynka I Wspólnicy Kancelaria Prawno-Patentowa, ul. Słomińskiego 19/522, 00‑195 Warszawa, Poland (professional representative)

a g a i n s t

Fila Luxembourg S.Á.R.L., 26, Boulevard Royal, 2449 Luxemburg, Luxemburg (EUTM proprietor), represented by Abril Abogados, C/Amador de los Ríos, 1-1°, 28010 Madrid, Spain (professional representative).

On 06/08/2020, the Cancellation Division takes the following

DECISION

1. The application for a declaration of invalidity is rejected in its entirety.

2. The applicant bears the costs, fixed at EUR 450.

REASONS

The applicant filed an application for a declaration of invalidity against European Union trade mark No 17 970 522 (3D mark) (the EUTM). The request is directed against all the goods covered by the EUTM, namely:

Class 25: Footwear.

The applicant invoked Article 59(1)(a) EUTMR in conjunction with Article 7(1)(a) and (b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argued that the contested trade mark represented a partial shape of a typical sports shoe. The trade mark reveals only two sides of the shoe, namely the bottom (sole) and the left or right side. The shoe’s other four sides—the upper, the other side, front and back—are not revealed. Therefore, the public is not able to determine the full shape of the registered shoe. The applicant underlined that the trade mark was registered as a 3D shape, hence the registered shape should be represented in full, that is, it should represent all possible sides of the registered shoe. As this is not the case, the challenged trade mark should be invalidated as failing to meet the requirements of Article 4(b) EUTMR, since its representation does not allow the public to determine the precise subject of protection.

Furthermore, the applicant contended that the trade mark represented a common sports shoe, since it is composed of elements that are commonly present in these types of shoes available on the market. These elements include a sole composed of midsole and outsole with studs, heel counter, quarter, Achilles notch, pull tab, collar, tongue, laces, eyelets, toe box, toe cap, stitches, shank and trade mark ‘FILA’ formed of stitches. None of the abovementioned elements differ significantly from sports shoes available on the market. Not only are the elements of the shoe not much different from those commonly used by shoe producers, but the shoe, as a whole, cannot be considered distinctive or new as there are many sport shoes almost identical to the one represented by the challenged trade mark. All the features that are most visible in the challenged trade mark also have specific functions related to sporting activities. The remaining features of the shoe represented by the challenged trade mark are common for most types of shoes, not only sport shoes. The applicant also pointed out that all the stitches that were represented by the trade mark (including the stitches of the word ‘FILA’) are hardly visible and hence do not have distinctive character. The stitches, whether of geometric figures or words, are also commonly used in sports shoes. It is therefore impossible for the average consumer to immediately distinguish all of the features of the challenged trade mark from those of other similarly styled shoes. When considering the impression of the mark as a whole, the combination is simply a stylish shoe with a number of design elements rather than a distinctive badge of trade origin that can immediately enable the relevant consumer to tell the shoe apart from similar offerings. Finally, the applicant added that these goods were cheap and purchased quite often, hence their consumers were the general public. The consumers of the goods will not pay much attention when buying shoes.

In support of its observations, the applicant filed the following evidence:

 printouts from various internet sites regarding sports shoes.

In reply, the EUTM proprietor summarised the history of the trade mark ‘FILA’ and submitted documents to show that the disruptor model (the contested mark) is one of the most iconic and best-known sneakers in the world. The EUTM proprietor argued that to be capable of constituting a trade mark for the purposes of Article 4 EUTMR, the sign must satisfy three conditions: it must be a sign capable of distinguishing the goods or services of one undertaking from those of others and capable of being represented on the Register in a way that allows the competent authorities and the public to determine the clear and precise subject matter of protection. The EUTM proprietor considers that the contested mark meets these criteria.

The EUTM proprietor considers that the contested EUTM cannot be cancelled on the grounds cited by the applicant based on Article 7(1)(a) EUTMR for the following reasons.

Article 3(3)(c) EUTMIR defines shape marks as trade marks consisting of, or extending to, a three-dimensional shape, including containers, packaging, the product itself or their appearance. The term ‘extending to’ means that these marks cover not only shapes per se but also shapes that contain word or figurative elements such as logos or labels.

The EUTM proprietor argued that, contrary to the applicant’s arguments, the contested trade mark is not exclusively composed of the shape of the goods, since it contains additional verbal and figurative elements, such as the figurative mark , which is distinctive and clearly visible. It claimed that, as a general principle, any element that on its own is distinctive would lend the shape trade mark distinctive character as long as it was perceivable in the normal use of the product and was sufficient to render the mark registrable. The fact that the distinctive mark is clearly affixed to the sole, the midsole, the backstay and under the eyelets of the shoe is sufficient to render the shape trade mark distinctive and consequently registrable. The proprietor submitted a list of 3D shapes which were registered at the EUIPO within the last 5 years. Among these, it specially mentioned those containing additional distinctive verbal elements in Class 25.

In support of its observations, the EUTM proprietor filed the following evidence.

As the EUTM proprietor requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Cancellation Division will describe the evidence only in the most general terms without divulging any such data.

 Document 1: a list of ‘FILA’ trade marks. The proprietor owns 84 trade mark registrations with the mark ‘FILA’ in Classes 25 and/or 28 in the European territory.

 Document 2: an article from The Guardian dated 26/07/2018.

 Documents 3-4: articles from the UK online publication Who What Wear dated 27/07/2018 and 28/07/2018.

 Document 5: a picture showing a Disruptor’s advertisement on an English bus.

 Document 6: an online article from Menzig Style, dated 14/02/2019.

 Document 7: an online article from the Spanish newspaper El Pais, dated 10/10/2018.

 Document 8: an online article from the Spanish fashion publication Glamour, dated 08/02/2019.

 Document 9: an article from the Spanish economic publication El Economista, dated 24/06/2019; two articles from the Portuguese publication Jornal de Negocios and Noticias Financieras, both dated 08/07/2019; an article from Noticias Financieras, dated 13/12/2018; an article from the Irish Independent, dated 03/01/2019, an article from the German publication DeutscherFachverlag GmbH, dated 11/10/2018.

 Document 10: social media posts in Europe.

 Document 11: several Italian press articles, all concerning the DISRUPTOR II shoe.

 Document 12: a ranking conducted by Marketing91 ‘TOP 18 Shoe Brands in The World’.

 published on 25/10/2018, the trade mark ‘FILA’ is listed as No. 13.

 Document 13: a ranking marketing posted by Ranker Shopping where ‘FILA’ has been positioned as No. 11 among the best sportswear brands.

 Document 14: the mark ‘FILA’ has been posted by Forbes in 2018 and 2019 as ‘The best Women sneakers’ and ‘As the brand dominating the back to school sales’.

 Document 15: Price Lists of Autumn/Winter 2017, 2018 and 2019

 Document 16: Price Lists of Spring/Summer 2017, 2018, 2019 and 2020.

 Document 17: Workbook of Autumn/Winter 2019, Spring/Summer 2017, 2019 and 2020.

 Document 18: Workbook Autumn/Winter 2017 footwear.

 Document 19: Workbook Autumn/Winter 2018 Contemporary footwear.

 Document 20: Workbook Autumn/Winter 2018 Heritage footwear.

 Document 21: Workbook Autumn/Winter 2018 SportStyle footwear.

 Document 22: Workbook Spring/Summer footwear.

 Document 23: Marketing Material concerning use of the mark in Germany.

 Document 24: a list of 3D shapes, which were registered at the EUIPO within the last 5 years.

In reply, the applicant argued that the history of the trade mark ‘FILA’ is irrelevant and that the articles that are not in English should be disregarded. It added that it is admissible to question the manner of representation of the trade mark at issue and the Office is obliged to examine it in invalidation proceedings.

Furthermore, the applicant argued that the contested trade mark is represented only by two-dimensional images not containing any shading that would indicate the three-dimensional nature of the mark at issue. It is impossible to ascertain the full view of the trade mark only with the two views presented. It argued that the proprietor claims that the trade mark ‘FILA’ is affixed ‘to the sole, the midsole, the backstay and under the eyelets of the shoe’ and presents the representation of the disputed trade mark supplemented by two additional signs ‘FILA’ which are not visible in the contested mark. By doing so, the EUTM proprietor admits that the disputed trade mark is not represented in its entirely. Therefore, the claim that the contested trade mark does not meet the requirements mentioned in Article 4(b) is justified.

The applicant added that the evidence submitted by the EUTM proprietor does not prove that the shape of the disruptor sneaker departs significantly from the norm of the sector. The EUTM proprietor brings many different shoes named ‘Disruptor’ to the market. Therefore, it is impossible to determine if the articles and statement of the proprietor do refer to the contested trade mark or to any other model. The Disruptor models were not the first shoes with a chunky platform sole and there are many sneakers that have the notched saw-tooth sole. The articles submitted are about current trends in fashion related to shoes, not about the Disruptor shoe only, so prove that the Disruptor shoe has features that are commonly present in other shoes. The documents like price lists, marketing material or workbooks are hereby questioned as ever being made public. The statement that the trade mark ‘FILA’ is clearly affixed to the sole, the midsole, the backway and under the eyelets of the shoe and that this is sufficient to render the shape trade mark distinctive and consequently registrable is unfounded and should be disregarded. The trade mark reveals only three marks ‘FILA’, not five as the proprietor suggested. All of the three trade marks are, in fact, only outlines of the trade mark ‘FILA’; the real trade mark ‘FILA’ is red and blue, which gives the trade mark specific character and makes it distinctive. In contrast, the contested mark is composed only of thin lines, which make them almost invisible and impossible to perceive in the normal use of the shoe. This is confirmed by the pictures of the Disruptor shoes placed in the observations of the proprietor. The applicant considered that the cases of the Cancellation Division 19 621 C Gibson Les Pauls and 1 176 C Lindt Goldhaser are not applicable as the three trade marks ‘FILA’ are hardly visible. The applicant invoked case 27/06/2017, T‑580/15, SHAPE OF A LIGHTER WITH WORD DEVICE ‘CLIPPER’ (3D), EU:T:2017:433. It contended that the proprietor filed the contested trade mark as a 3D trade mark without providing any details. There is no description of the trade mark or any information on acquired distinctiveness and finally, if the word is of minor importance, it cannot confer any distinctive element on the trade mark as a whole.

In reply, the EUTM proprietor argued that the contested 3D shape mark contained the registered mark ‘FILA’, which is distinctive enough to also render this 3D shape mark distinctive. The mark ‘FILA’ contained in the contested trade mark is not only distinctive per se, but it has acquired enhanced distinctiveness as a consequence of the use the proprietor has made of it to the extent of being reputed. In the present case, the contested trade mark is not exclusively composed of the shape of the goods as in both views, the mark is clearly noticeable and visible. The case-law mentioned by the applicant (27/06/2017, T‑580/15 ‘CLIPPER’) is different as the sign ‘FILA’ is clearly perceptible in the views of the contested EUTM. The mark ‘FILA’ is not small and the relevant public displaying an average level of attention in relation to the goods will perfectly perceive this element which, moreover, consists of one of the most reputed marks in the sports/fashion world. Word or figurative elements added to a shape mark facilitate the determination of the commercial origin.

ABSOLUTE GROUNDS FOR INVALIDITY – ARTICLE 59(1)(a) EUTMR IN CONJUNCTION WITH ARTICLE 7 EUTMR

According to Article 59(1)(a) and (3) EUTMR, a European Union trade mark will be declared invalid on application to the Office, where it has been registered contrary to the provisions of Article 7 EUTMR. Where the grounds for invalidity apply for only some of the goods or services for which the European Union trade mark is registered, the latter will be declared invalid only for those goods or services.

Furthermore, it follows from Article 7(2) EUTMR that Article 7(1) EUTMR applies notwithstanding that the grounds of non‑registrability obtain in only part of the Union.

As regards assessment of the absolute grounds of refusal pursuant to Article 7 EUTMR, which were the subject of the ex officio examination prior to registration of the EUTM, the Cancellation Division, in principle, will not carry out its own research but will confine itself to analysing the facts and arguments submitted by the parties to the invalidity proceedings.

However, restricting the Cancellation Division to an examination of the facts expressly submitted does not preclude it from also taking into consideration facts that are well known, that is, that are likely to be known by anyone or can be learned from generally accessible sources.

Although these facts and arguments must date from the period when the European Union trade mark application was filed, facts relating to a subsequent period might also allow conclusions to be drawn regarding the situation at the time of filing (23/04/2010, C‑332/09 P, Flugbörse, EU:C:2010:225, § 41 and 43).

GRAPHIC REPRESENTATION REQUIREMENTS - Article 7(1)(a) EUTMR

The applicant argued that the contested trade mark does not meet the requirements mentioned in Article 4(b) EUTMR.

Article 7(1)(a) EUTMR reflects the Office’s obligation to refuse signs that do not conform to the requirements of Article 4 EUTMR.

According to Article 4 EUTMR an EU trade mark may consist of any signs, in particular words, including personal names, or designs, letters, numerals, colours, the shape of goods or of the packaging of goods, or sounds, provided that such signs are capable of … (b) being represented on the Register of European Union trade marks (‘the Register’), in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor.

Pursuant to Article 3(3)(c) EUTMIR, in the case of a trade mark consisting of, or extending to, a three-dimensional shape, including containers, packaging, the product itself or their appearance (shape mark), the mark shall be represented by submitting either a graphic reproduction of the shape, including computer-generated imaging, or a photographic reproduction. The graphic or photographic reproduction may contain different views. Where the representation is not provided electronically, it may contain up to six different views.

According to the guidelines of the Office (https://euipo01app.sdlproducts.com/1803468/1785874/trade-mark-guidelines/2-1-shape-marks), the term ‘extending to’ means that these marks cover not only the shapes per se, but also shapes that contain word or figurative elements, labels and so on.

These are the requirements that the contested mark must fulfil in order to comply with the relevant legal provisions. In the present case, the contested trade mark was filed in 2018 with the indication ‘FILA’ in the field ‘verbal elements’ and that it was a 3D shape. In addition, the fact that the word ‘FILA’ is present in both views is enough to indicate that the applicant of the contested EUTM considered these elements as part of the scope of protection of the trade mark. The contested mark is reproduced as . Therefore, it is clearly capable of being represented graphically. The contested mark is shown using two different perspectives which clarify the position of the word elements (which appear three times). Therefore, the mark complies with all the legal requirements applicable to three-dimensional trade marks regarding their representation. The applicant argued that the sign should represent all possible sides of the registered shoe and should contain shading that would indicate the three-dimensional nature of the mark at issue. However, such conditions are not required by the above Articles. According to Article 3(3)(c) the graphic reproduction may contain different views. The sign may contain up to six perspectives of the same shape. While different perspectives may be filed, a single view of the shape is sufficient where the shape to be protected can be ascertained from that single view. The graphic representation of the sign clearly shows that the subject matter of the protection is a sneaker on which the word ‘FILA’ appears three times, like the one depicted on the sign. It is, therefore, a graphic representation that complies with Article 4 EUTMR.

Therefore, the Cancellation Division concludes that the EUTM application satisfied the requirements under Article 4(b) EUTMR in conjunction with Article 7(1)(a) EUTMR.

NON-DISTINCTIVENESS – Article 7(1)(b) EUTMR

Under Article 7(1)(b) EUTMR, trade marks which are devoid of any distinctive character must not be registered. If a trade mark has a minimum degree of distinctive character it is not devoid of distinctive character, in which case this ground of refusal cannot apply.

Accordingly, the signs referred to in Article 7(1)(b) EUTMR are regarded as incapable of performing the essential function of a trade mark, namely that of identifying the origin of the goods, thus enabling the consumer who acquired the goods to repeat the experience, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition (28/05/2013, T‑178/11, Bottle, EU:T:2013:272, § 37).

For a trade mark to possess distinctive character for the purposes of that provision, it must serve to identify the product in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish that product from those of other undertakings (08/05/2008, C‑304/06 P, Eurohypo, EU:C:2008:261, § 66).

The criteria for assessing distinctiveness are the same for the various categories of marks. Nonetheless, the relevant public’s perception of the various categories of marks is not necessarily the same. Average consumers are not in the habit of making assumptions about the origin of products on the basis of their shape and it could therefore prove more difficult to establish distinctive character in relation to such a three-dimensional mark than in relation to a verbal or figurative mark.

Only a mark which departs significantly from the norm or customs of the industry and thereby fulfils its essential function of indicating origin, is not devoid of any distinctive character for the purposes of Article 7(1)(b) EUTMR (24/05/2012, C‑98/11 P, Hase, EU:C:2012:307, § 42).

The distinctiveness of a trade mark may comprise an assessment of the individual elements separately but must depend in the end on an appraisal of the sign as a whole (16/09/2004, C‑329/02 P, SAT.2, EU:C:2004:532, § 28).

The distinctive character of a mark must be assessed by reference to the goods or services in respect of which registration or the protection of the mark has been applied for and by reference to the perception of the relevant public, which consists of average consumers of those goods or services (29/04/2004, C‑456/01 P & C‑457/01 P, Tabs, EU:C:2004:258, § 35).

The goods at issue (footwear) are ordinary consumer goods and target the public at large within the entire European Union who is deemed to be reasonably well-informed and reasonably observant and circumspect.

In order to determine if the threshold of distinctiveness is met, a number of elements and factors affecting the distinctiveness of the sign as a whole are borne in mind. If a non-distinctive shape contains an element that is distinctive on its own, it will suffice to render the sign as a whole distinctive. The size and proportion of the verbal/figurative elements, their contrast with respect to the shape, and their actual position on it, are all factors which may affect the perception of the sign when assessing its distinctiveness.

When the verbal/figurative element is sufficiently large to be clearly identified as distinctive, and has sufficient impact on the overall impression given by the sign, it renders the sign as a whole distinctive. Specific market realities must also be taken into consideration. Consumers are in the habit of identifying small elements on certain goods. Therefore, despite the small size the verbal elements can still be identified as distinctive elements in the representation.

During its submissions the applicant has admitted to the presence of three ‘FILA’ elements on the sign. It has not been discussed by the parties whether the word ‘FILA’ is distinctive in all the relevant languages. The ‘FILA’ elements are in no way negligible, in particular, the one on the midsole is clearly visible. Because of its size and position this element will be noticed by consumers and will be remembered by them. It must therefore be considered as a distinctive element.

The applicant argued that the ‘FILA’ elements are composed of thin lines, which make them almost invisible and impossible to perceive in the normal use of the shoes. However, the signs have to be examined in the form in which they are protected, that is, in the form in which they are registered. The actual or possible use of the registered marks is irrelevant when examining signs. The Cancellation Division considers that, despite the absence of colours, the size and position of the elements ‘FILA’, in particular the one on the midsole, are still clearly visible and sufficient to allow them to be identified as distinctive in the representation of the sign.

When faced with a product a consumer will instinctively look for a verbal or graphic sign that will tell them the commercial origin of said product. This is especially true for sneakers. Indeed, the images of numerous sneakers submitted by both parties show that it is usual for these goods to carry a verbal or figurative sign. If the applicant is correct in alleging that the consumer will not recognise or accept the shape of the 3D image as denoting trade origin, then the applicant must accept that a consumer would search for a verbal or figurative element on the product in order to receive the information of origin (see 12/01/2011, R 0785/2010-1, ‘3-dimenstional bottle’). This therefore leads to the assumption that the consumer will search for, and find, the words ‘FILA’.

Considering that it is standard case-law that a trade mark which is made up of several components must be considered as a whole, then the distinctive word elements ‘FILA’ endow distinctiveness upon the entire trade mark.

The applicant invoked the decision 27/06/2017, T‑580/15, ‘CLIPPER’. However, this case is not relevant to the present proceedings. In particular, as correctly stated by the EUTM proprietor, the present case is different from that decision of the Court. The mark ‘FILA’ is represented three times and the word ‘FILA’ indicated on the midsole is not small in size and is clearly perceptible in the contested EUTM.

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions.

In view of the above, it follows that, even if the previous decision submitted to the Cancellation Division is to some extent factually similar to the present case, the outcome may not be the same.

As previously mentioned, even the standard shape of a product can be registered as a shape trade mark if a distinctive word mark appears on it. Therefore, it is not necessary to examine whether the shape itself is distinctive.

For the sake of completeness, since the Cancellation Division considers that the contested mark has a minimum of distinctive character on the basis of its inherent distinctiveness, there is no need to assess the claim of acquired distinctiveness of the contested mark through use as requested by the EUTM proprietor.

Conclusion

In the light of the above, the Cancellation Division concludes that the application should be rejected.

COSTS

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the costs incurred by the EUTM proprietor in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(ii) EUTMIR, the costs to be paid to the EUTM proprietor are the representation costs, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Anne-Lee KRISTENSEN

Richard BIANCHI

Ana MUÑIZ RODRIGUEZ

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.