The Italian company Tecnica Group SpA was refused protection as a three-dimensional mark by the European Office.
The trademark had been filed at the European level in 2011.
Following a dispute with another Italian company called Zeitneu, the latter invoked the invalidity of the trademark opposed to them, on the grounds of the lack of distinctive character for shoes.
The Cancellation Division and the Board of Appeal of the European Office rule in favor of Zeitneu. It turns out that Tecnica has omitted a major argument in their defense: they did not use the ground of acquisition of distinctiveness through use in the European Union.
However, it is not enough to note the reputation of the mark to conclude that there is an intrinsic or even acquired distinctive character through use throughout the territory of the European Union.
Thus the European Office was able to conclude that in 2011 when the mark was filed, the sign was devoid of any distinctive character. Indeed the shape of après-ski marketed for more that 70 years is only a variant of the other shapes of winter boots and take up « the common shape of après-ski boots, which generally consist of a high rod, often in a synthetic and light material, with soles and laces ».
This judgment is also an opportunity for the European Office to recall that if the purpose of the invalidity action is to re-examine the validity of a registered mark, the procedure for a finding of non-infringement admits the validity of the mark and its intrinsic distinctiveness.