On 13 September 2018, the Court of Justice of the European Union (the "ECJ") held in Case C-26/17P, Birkenstock v. EUIPO, that Birkenstock's pattern of wavy lines crisscrossing at right angles in a repetitive sequence could not be protected as a figurative mark.

In 2012, Birkenstock GmbH ("Birkenstock") obtained an international registration for a figurative mark representing a pattern of wavy lines crisscrossing at right angles in a repetitive sequence. Birkenstock sought an extended protection for the goods for Nice Classes 10 (orthopaedic footwear, foot support and orthopaedic shoe components), 18 (leatherwear) and 25 (footwear, comfort footwear and sandals, foot and shoe inserts, in particular of natural cork or thermal cork).

In 2014, the European Union Intellectual Property Office ("EUIPO") refused to grant protection for the international mark in the European Union, based on the lack of distinctive character of the pattern for the purposes of Article 7(1)(b) of Regulation No. 207/2009 on the Community trade mark (the "CTM Regulation"). The EUIPO found that this pattern could indeed extend indefinitely in all four directions and could be applied to any two- or three-dimensional surface. Hence, it could immediately be perceived by the relevant public as a surface pattern, rather than an indication of any particular commercial origin. Therefore, the EUIPO applied the case law relating to the signs that are indissociably linked to the appearance of the products in question. According to this case law, average consumers do not usually presume the commercial origin of goods based on signs that are indissociably linked to the goods themselves. Such signs acquire distinctive character only if they depart significantly from the sectoral standards or usual practices.

Birkenstock sought to annul EUIPO's decision before the General Court of the European Union, claiming that the EUIPO had not examined the sign in its registered form, in particular: an image with a clearly delimited surface that is not indissociably linked to the shape of the goods, but had unjustifiably asserted that the sign could be reproduced and continued. But the General Court found, in essence, that it is only when the use of a surface pattern can be considered unlikely, in the light of the nature of the products at issue, that such a sign could claim protection. It held that in the case at hand the sign was likely to be used as surface pattern and, therefore, upheld EUIPO's decision in this respect.

Birkenstock further appealed to the Court of Justice of the European Union (the "ECJ").

In the appeal before the ECJ, Birkenstock claimed that it was not sufficient that a trade mark could be used as a surface pattern in order for the case law relating to signs that are indissociably linked to the appearance of the goods to apply. Instead, it argued that the surface pattern had to be the sign's "most likely use". The ECJ dismissed that argument, considering that there was an inherent probability that a sign consisting of a repetitive sequence of elements would be used as a surface pattern. Therefore, the sign was indissociably linked to the appearance of the goods concerned and the relevant case law was rightfully applied by the EUIPO and the General Court.

The ECJ, furthermore, agreed with the General Court that the pattern in question, consisting of a simple combination of wavy, crisscrossing lines, repeating indefinitely, did not depart from this usual practice. In addition, the ECJ insisted that the applicant bears the burden of proving that a trade mark applied for is distinctive and of providing evidence showing that this trade mark had either an intrinsic distinctive character or a distinctive character acquired through use. In this respect, the ECJ found that Birkenstock had not provided the images establishing the standards and usual practices of the sectors concerned. Lastly, the evidence brought by Birkenstock – consisting of images of the inner soles of shoes – was insufficient to establish that there was a significant departure by the sign from the standards and usual practices of the sector.

As a consequence, the ECJ dismissed the appeal in its entirety.

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