An application by an Austrian company, Think Schuhwerk, to register a Community trade mark for red-tipped shoelaces was refused by the General Court of the EU.
To register a trade mark the mark must be distinctive (or in other words be able to indicate to consumers who made the goods or provided the services). If the mark, in and of itself, is not distinctive, evidence to show that it has acquired distinctiveness through use can be submitted to support registration. For example, Cadbury has been able to show that consumers have grown to associate the colour purple with its chocolate bars.
However, the court in this case held that there was no evidence to suggest that the colour of parts of the laces of a shoe is usually perceived by the public as an indication of the designer or producer of the shoe. The court held that customers would see the coloured shoe lace tips as ornamental, and Think Schuhwerk had provided no evidence that the red-tipped shoelaces had acquired distinctiveness through Think Schuhwerk’s use. The mark could not be therefore registered.
Commentators have concluded that the decision is correct, as it is doubtful that consumers looking at the tips of shoelaces would think that a certain colour was used to designate which brand or designer made the shoe itself.
If you would like advice about trade marks, or any other IP related issues, please contact the IP and Media Team at Pannone.
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