TY - JOUR
AB - Registration of Three-Dimensional Marks Consisting of the Shape of Footwear Trademark Act, Chapter 2, § 4, Chapter 2, § 5 and Chapter 3, § 1 – Crocs Headnotes by the Editorial Office 1. The main purpose of the grounds for refusal of trade marks consisting of a shape that results from the nature of the goods themselves, that is necessary for the good to achieve a technical result, or that gives the good a substantial value, is to prevent the circumvention of the limitation of the protection period that applies to other intellectual property rights. In addition, there is also the need to protect the public interest by ensuring that certain shapes remain free from registration. 2. In order to examine whether the shape results from the nature of the good, it is first necessary to identify the essential features of the trade mark in question, which will then constitute the object of the assessment. This can be based either on the overall impression of the mark or on a successive review of the various components that make up the mark. The chosen method depends on a case-by-case evaluation. 3. When an essential element of the trade mark fulfils a technical function, that element shall not be considered to result from the nature of the good if different ways of achieving the same technical function exist, and, in particular, when it is possible to conceive countless variations in the design of that element. 4. As for the ascertainment of the trade mark’s inherent distinctive character, in the case of mass-produced consumer goods, the consumer usually expects the mark to consist of a word mark rather than the shape of the good. Thus, for the trade mark to function as an indication of origin, it is necessary that the shape differs significantly from the norm or what is customary in the industry. The fact that the good became a commercial success is not sufficient to be able to draw any conclusions as to the inherent distinctive character of its shape. 5. Data proving the commercial success of a product, including marketing material and sale figures, do not provide real guidance on the question whether the shape of the good has acquired distinctiveness through use. To provide reliable evidence of the acquired distinctiveness of a trade mark, market surveys should allow respondents to express their lack of knowledge or conviction on the questions referred to them and should not contain any misleading response options as to the possible origin of the good. Furthermore, the assessment of the result of the survey must take into account whether the marketing took place using only the shape of the good as a feature. Patent and Market Court of Appeal (Patent- och marknadsöverdomstolen), decision of 2 December 2020 ‒ PMT 7014-19 Judgment 1. The Patent and Market Court of Appeal rejects Crocs Inc.’s request for reimbursement of legal costs incurred in front the Patent and Market Court. 2. The Patent and Market Court of Appeal confirms paras. 1 and 3 of the judgment of the Patent and Market Court. 3. Crocs Inc. shall reimburse ÖoB Aktiebolag for their incurred legal costs in the amount of SEK 1,001,355 with interest, pursuant to § 6 of the Interest Act from the date of this judgment until payment is made. Of the above amount SEK 1,000,000 is calculated for the representative fees. 4. The decision of Patent and Market Court regarding secrecy remains intact. Examination of the action for revocation by interlocutory judgment By the judgment under appeal, the Patent and Market Court upheld the action of ÖoB Aktiebolags (ÖoB) and revoked the registration of the trade mark in accordance with Appendix 1 to the judgment and dismissed Crocs Europe BV’s action for infringement of the trade mark. The judgment has been appealed by Crocs Europe BV regarding the infringement. The Patent and Market Court of Appeal has, in a decision of 7 October 2020, ordered that by a special judgment according to Chapter 17, § 5 first paragraph of the Code of Judicial Procedure to first consider the appeal regarding the action for revocation of the trade mark registration between ÖoB and Crocs Inc. (Crocs). Pleadings Crocs requested the dismissal by the Patent and Market Court of Appeal of ÖoB’s action for revocation of Crocs’ three-dimensional trade mark with registration number 400514 (the ‘trade mark’). Crocs further requested that the Patent and Market Court of Appeal dismiss the obligation to reimburse ÖoB’s legal costs in front of the Patent and Market Court and instead oblige ÖoB to reimburse Crocs for its legal costs in front of the same court. Finally, Crocs requested the reimbursement of its legal costs incurred in front of the Patent and Market Court of Appeal. ÖoB disputed all of Crocs’ claims for amendment of the judgment and demanded that Crocs’ claim for reimbursement of costs in front of the Patent and Market Court be rejected since it was filed after the time for such request had elapsed. ÖoB also claimed reimbursement for its legal costs in the Patent and Market Court of Appeal. Crocs denied ÖoB’s rejection claim. The submission by the parties In the part of the judgment that is now under the appeal, the parties have relied on the same circumstances and evidence as in front of the Patent and Market Court. The parties have also argued in legal matters in essentially the same way as in front of the Patent and Market Court. Crocs has clarified that the dotted fields and lines on the slipper must also be considered essential features. ÖoB has objected that the dotted fields and lines are not essential features and stated that dots and lines have been common in the market for shoes. They therefore result from the nature of the good, are functional, give the good a technical result and fulfil a generic function. On the other hand, they are also properties that are in demand in competitors’ goods and thus give the good a substantial value. Regarding what is stated under the heading BACKGROUND in the Patent and Market Court’s judgment, ÖoB has objected that the term ‘Foppatoffeln’ in Sweden is also used for other slippers of the same type. Grounds Rejection of Crocs’ claim for legal costs Crocs only submitted a request for an amendment on reimbursement for legal costs at the main hearing in front of the Patent and Market Court of Appeal. No such claim was contained in the notice of appeal. Crocs has thus not presented its claim for reimbursement of legal costs in front of the Patent and Market Court before the time for lodging an appeal on the judgment of the Patent and Market Court had elapsed (cf. inter alia, NJA 1981 p. 683). Crocs’ claim in that part must therefore be rejected. The appeal procedure The Patent and Market Court of Appeal, like the Patent and Market Court, finds reason to initiate the examination of whether the registration of the trade mark should be revoked in accordance with Chapter 3, § 1 of the Trademark Act (2010:1877) regarding the issue of the existence of any of the grounds for refusal of registration listed under Chapter 2, § 4 of the Trademark Act. If the Patent and Market Court of Appeal considers that none of the grounds for refusal of registration in this provision are applicable, the court will instead consider whether the registration should be revoked due to lack of distinctiveness. In the event that the registration cannot be revoked on this ground either, it remains to be seen whether the trade mark, as a result of Crocs’ action or inaction, has become a common name in trade for such goods to which the registration relates (so-called generic mark). Revocation due to the fact that the mark consists only of a shape which results from the nature of the goods, is necessary for the good to achieve a technical result or gives the good a substantial value Legal principles The question that must be examined first is whether the trade dress in question, through its shape, can be registered as a trade mark. The legal principles for this review are set out in the judgment of the Patent and Market Court on pages 33-35, to which the Patent and Market Court of Appeal refers. In addition to what the Patent and Market Court stated in its judgment, the issue of grounds for refusal of registration of an ornamental object as a trade mark due to the shape of the good has been dealt with in the Court of Justice of the European Union’s decision of 23 April 2020, Gömböc, C-237/19, EU:C:2020:296 [= GRUR International 2020, 863]. As the Patent and Market Court stated, it is clear from the case law of the Court of Justice of the European Union that the main purpose of the rules on the grounds for refusal of registration of certain types of trade marks is to prevent circumvention of the limitation of the protection period that applies to other intellectual property rights. There is also a need for a concept to remain free from registration for certain designs of a good. These are often designs that normally also lack the prerequisites to meet the requirement for distinctiveness. However, it is not the inability of these shapes to function as a means of individualisation that primarily signifies that they are excluded from trade mark protection, but instead public interests that are considered to outweigh the interests of the individual company (see Erika Lunell, Unconventional trade marks, Norstedts, 2007, p. 65). The Patent and Market Court of Appeal’s assessment ÖoB argued that the registration of Crocs’ trade mark should be revoked because the trade mark consists only of a shape that results from the nature of the good, is necessary for the good to achieve a technical result and gives the good a substantial value. According to ÖoB, the trade mark is thus affected by all current grounds for refusal of registration in Chapter 2, § 4 of the Trademark Act. The Patent and Market Court of Appeal has decided that in this case it is most convenient to examine whether the shape results from the nature of the goods first. As the Patent and Market Court stated, the essential features of the trade mark (i.e. its main components) must first be identified when examining whether the shape results from the nature of the good. This must be done objectively (Court of Justice of the European Union decision of 14 September 2010, Lego, C-48/09 P, EU:C:2010:516 [= GRUR Int 2010, 985], paras. 69 and 70). The assessment can be based either on the overall impression of the mark or through a successive review of the various components that make up the mark. The method chosen may be decided on a case-by-case basis (Lego, para. 70, and the judgment of the Court of Justice of the European Union of 18 September 2014, Hauck, C-205/13, EU:C:2014:2233 [= GRUR Int 2014, 1043], para. 21). The graphic representation of the trade mark included in the registration certificate (Appendix 1 to the Patent and Market Court’s judgment) shows that the trade mark consists of an item of footwear that can almost be described as a slipper-like shoe. It is not completely covered at the back but is equipped with a heel strap. The shoe gives the impression of having a slightly reinforced sole and heel which indicates that it is intended to be used outdoors. The good category that becomes relevant in assessing the tradability of the mark in terms of the shape of the good in relation to its nature is thus a slipper-like shoe intended for outdoor use. The parties in the case are of the opinion that the essential features of the mark are the heel strap, the flat rivets, the wide and round toe part, and that there are holes on the top and on both sides. Crocs has argued that the dotted fields and lines on the sole along the outer long side are also essential features, which ÖoB, on the other hand, disputes. With regard to the essential features of the trade mark, the Patent and Market Court of Appeal makes the same assessment as the Patent and Market Court regarding the dots and lines that exist on the mark – i.e. that they do not constitute essential features of the mark. According to the Patent and Market Court of Appeal, the dots and lines, which possibly constitute a simpler decoration, are not very prominent and they thus have no large or essential significance for the trade mark (cf. Hauck, para. 22). Unlike the Patent and Market Court and the parties, the Patent and Market Court of Appeal also considers that the flat rivets and the slightly widened and round toe area do not constitute features that can be deemed essential. According to the Patent and Market Court of Appeal, the essential features of the trade mark thus consist partly of the heel strap and partly of the holes on the top and on the sides. The assessment of whether the mark consists only of a shape which results from the nature of the good will thus be made with regard to the holes on the shoe and the heel strap. Like the Patent and Market Court, the Patent and Market Court of Appeal assesses that the heel strap only has a generic function of holding the shoe in place. Regarding the holes on the shoe as an essential feature, in this context they must be understood as holes with the number, size and detailed design as well as the location that appears from the trade mark registration. The evidentiary procedure in the case shows that the holes have the function of increasing ventilation. The holes on the sides have been designed and placed in such a way that water, for example, should be able to flow out easily. The fact that an item of footwear of the current type has good ventilation and enables water to drain out must certainly be assumed to be considered as properties that a consumer demands from competitors’ goods. However, this can be accomplished in several different ways. It is possible to vary the design ‒ for example in terms of the number of holes, their size, shape and location ‒ to achieve the same functions as in the holes in the Crocs shoe. The scope for variations in the design is thus almost infinite. The conclusion of the Patent and Market Court of Appeal is therefore that the trade mark cannot be considered to consist only of a shape that results from the nature of the goods. Regarding the other grounds for refusal of registration in Chapter 2, § 4 of the Trademark Act, the Patent and Market Court of Appeal finds that the shape of the goods cannot be considered necessary to achieve a technical result either. The ventilation and drainage that the holes provide can in this context not be considered a technical result in the sense referred to in Chapter 2, § 4 of the Trademark Act. The design and location of the holes can also not be considered to give the good a substantial value within the meaning of the provision (cf. Hauck, paras. 32 and 35). The Patent and Market Court of Appeal’s assessment is thus that the registration should not be revoked on the grounds that the trade mark has been registered in violation of Chapter 2, § 4 of the Trademark Act. Revocation due to lack of distinctiveness Legal principles If the shape of the trade mark is not affected by the provision in Chapter 2, § 4 of the Trademark Act, the next question will be to examine whether there are grounds for refusal of registration due to lack of distinctiveness in accordance with Chapter 2, § 5 of the Trademark Act. As can be seen from Chapter 2, § 5 of the Trademark Act, distinctive character must be either inherent or acquired. In the event of revocation due to lack of distinctiveness, only such distinctiveness that has been acquired through use before the application for revocation shall be taken into account (Chapter 3, § 1, third paragraph of the Trademark Act). The provisions implement Arts. 4(1)(b) and 4(4) of Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 on the approximation of the laws of the Member States relating to trade marks. It follows from the transitional provisions to the amendments to the Trademark Act that the new provisions shall also apply to marks registered before the entry into force, which is the case here. ÖoB brought an action for revocation of the trade mark in November 2016. The circumstances in the period before that are therefore relevant to the trial. A trade mark shall be deemed to be distinctive if it can distinguish goods of one trader from the goods of other traders. As regards to the requirement of inherent distinctive character, this means that a reasonably well informed, observant and circumspect average consumer of the goods covered by the mark at the time of application for registration of the design can distinguish that good from other goods of rival traders, and understand that it comes from a particular trader (See, inter alia, the decision of the Court of Justice of the European Union of 8 April 2003, Linde, C-53/01 – C-55/01, EU:C:2003:206 [= GRUR Int 2003, 632], para. 40). More specifically, the possibility for a good’s shape to function as a trade mark requires that it differs significantly from the norm or what is customary in the industry (Court of Justice of the European Union decision of 7 October 2004, Mag-Lite, C-136/02, EU:C:2004:592 [= GRUR Int 2005, 135], para. 31). Whether the shape itself is suitable for indicating the origin of the good is decisive. In the case of mass-produced goods, the consumer usually has an expectation, and thus a greater awareness, that the mark should consist of a word mark instead of the shape of the good. If the good is sold at the same time under both a three-dimensional mark corresponding to the shape of the good and a word mark, it is not sufficient for the consumer to indirectly associate via the word mark the origin of the good. In such a case, it is required that the shape of the good is very unusual and original for the shape itself to function as an indication of origin (see Lunell, et al, p. 100, and also cf. the decision of the Court of Justice of the European Union on 18 July 2013, Specsavers, C-252/12, EU:C:2013:497 [= GRUR Int 2013, 928], para. 24). The existence of distinctive character must in all circumstances always be tested with an overall assessment of whether the mark is suitable as a means of identification for the goods to which the registration relates. As regards to the question of acquired distinctive character, the extensive use of a mark consisting of the shape of a good may be sufficient for the mark to be regarded as having acquired distinctive character. In these cases, it is required that it is a trader who has been the sole supplier of a certain good on the market and that extensive mark use has led to a significant proportion of the relevant public associating the shape with that trader and not with another (the decision of the Court of Justice of the European Union of 18 June 2002, Philips, C-299/99, EU:C:2002:377 [= GRUR Int 2002, 842], para. 65). The existence of acquired distinctive character must be tested on the basis of an overall assessment with regard to, among other things, the market share that the mark holds, how often and for how long it has been used, the investments that have been made for marketing it, and the proportion of the public which identify goods as originating from a particular trader because of the mark (the decision of the Court of Justice of the European Union of 7 July 2005, Nestlé, C-353/03, EU:C:2005:432 [= GRUR Int 2005, 826], para. 31). In assessing whether a mark has acquired distinctive character through use, the identification of it by the public must be the result of the use of the mark as such (Philips, para. 64). If a word mark is used in conjunction with a three-dimensional mark, it is also required in assessment whether the mark has acquired distinctiveness to the extent that consumers perceive the three-dimensional one as an individualisation which in itself has the ability to distinguish the trader’s good, despite the existence of the word mark (cf. Lunell, p. 230 f.). The case law of the Court of Justice of the European Union shows that the burden of proof for acquired distinctiveness rests with the trade mark proprietor. This is because that is an exceptional rule and the holder has the best conditions to present evidence on this point (the decision of the Court of Justice of the European Union of 19 June 2014, Oberbank, C-217/13 and C-218/13, EU:C:2014:2012 [= GRUR Int 2014, 815], paras. 68-70). The Patent and Market Court of Appeal’s assessment In support of the fact that the mark had its inherent distinctive character when it was launched in Sweden in 2005, Crocs relied on the great sales success that the good had then, and the extensive media attention it received. Both parties have also relied on pictures of what other footwear on the market at the time looked like. The evidentiary procedure shows that Crocs’ own model looked mainly like the graphic image in the trade mark registration, but that it was also provided with the word mark ‘Crocs’ visible on the heel strap and with a figurative mark in the form of a cartoon crocodile on the flat rivets that hold heel strap. According to the Patent and Market Court of Appeal’s assessment, it is clear from the evidentiary procedure itself that the good became a commercial success with its introduction in Sweden. The fact that the good became a commercial success is not sufficient to be able to draw any conclusions about the inherent distinctive character of the good’s shape. As the Patent and Market Court of Appeal has explained under the legal principles, consumers are typically less accustomed to the shape of a good indicating its commercial origin. A prerequisite for a trade mark that reflects the shape of the good to function as an indication of origin is that the shape differs significantly from the norm or what is customary in the industry (see Mag-Lite, para. 31). From the material presented, the Patent and Market Court of Appeal can state that there have been shoe models on the market that are similar to the registered trade mark to such an extent that Crocs’ model cannot be said to differ significantly from the norm or from what is customary in the industry. The question then becomes whether the shape of the good has acquired distinctiveness. Also, in this part, Crocs has relied on their product’s great sales success, even in the years shortly after its launch in 2005. Crocs has referred to sales figures in Sweden and to certain marketing material. The sales figures may be considered to show that a fairly large number of copies were sold in Sweden. However, this data does not provide any real guidance on the question of whether the actual shape of the good through use acquired distinctiveness and thereby come to function as a feature for identifying the good’s origin. The marketing materials submitted must be described as remarkably lean in the sense that is relevant to the current appeal process. Crocs has also relied on a market survey conducted in early 2008 where the interviewees were shown a picture of the shoe from the side. In the picture, the word Crocs and the cartoon crocodile have been masked and these features are not visible in the picture. The respondents were asked a number of questions, including what they thought of when they saw the picture. The survey suggested that 74% of the respondents could correctly identify the shoe’s name – ‘Foppatoffeln’ – and that 7% could say that it was a Croc’s product. Furthermore, 54% agreed with the statement ‘a shoe with this appearance originates from a specific company,’ while 46% agreed with the alternative offered, namely that ‘a shoe with this appearance can originate from any company’. The respondents were only given a choice between these two statements, and there was no option to answer ‘do not know’. The fact that there was no ‘do not know’ option means that the uncertainty in the interpretation of the response outcome increases and, according to the Patent and Market Court of Appeal, this must be seen as a shortcoming of the survey. The Patent and Market Court of Appeal also notes that the response option that the shoe could originate from any company is misleading, since it is obviously only companies that manufacture footwear that can be considered. The marketing at the time of the survey had also taken place with a strong connection to the ice hockey legend Peter ‘Foppa’ Forsberg. Finally, the assessment of the result of the survey must also take into account that the shoe at the time of the survey had been marketed with other applied features (i.e. the word Crocs and the cartoon crocodile), which further suggests that the shape of the good itself would be apt to be perceived as a feature (see Specsavers, para. 24). The marketing had thus not taken place using only the shape of the good as a feature. According to the Patent and Market Court of Appeal, what has now been stated means thatit is not possible to draw any conclusions with sufficient certainty as to whether the shape of the shoe itself is perceived as a feature of the good, based on the design of the market survey and its results. Nor is there any evidence that shows that in the period after the market survey, the mark has acquired distinctiveness. The Patent and Market Court of Appeal therefore finds that Crocs has not shown that the trade mark has acquired distinctive character. The assessments of the Patent and Market Court of Appeal means that the registration of the trade mark must be revoked. The judgment of the Patent and Market Court shall thus stand in this part, including what has been ordered on reimbursement of legal costs in the case concerning revocation of the trade mark. […] Appeal There is no reason to make an exception to the main rule that there is no appeal against the Patent and Market Court of Appeal judgments (see Chapter 1, § 3, third paragraph, Act, 2016:188, about patent and market courts). Therefore, there is no appeal against this judgement. […] Dissenting opinion Justice for the Court of Appeal Magnus Ulriksson dissents in terms of the justification and renders the following opinion. The purpose of the provision on certain grounds for refusal of registration under the former Art. 3(1)(e) of the Trade Marks Directive has been stated in, inter alia, the Court of Justice of the European Union decision in Nestlé on the chocolate bar Kit Kat (paras. 44 and 45): ‘The purpose of the grounds for refusal of registration provided for in Art. 3 (1) (e) of Directive 2008/95 is to prevent trade mark protection giving its proprietors exclusive rights to technical solutions or functional features of goods which a user is likely to seek in the goods of competitors (see, for a similar reasoning, Philips, C-299/99, EU:C:2002:377, para. 78, and Hauck, C-205/13, EU:C:2014:2233, para. 18).’ And: ‘The aim is to prevent the exclusive and permanent right conferred by a trade mark from serving to extend indefinitely the life of other rights which the EU legislature has sought to make subject to limited period (see, for a similar reasoning, Hauck, C-205/13, EU:C:2014:2233, para. 19)’. For the assessment of current grounds for refusal of registration, the nature of the good and the essential features that characterise it must first be determined. Essential features refer to the most important components (see Hauck, para. 21). Appendix 1 to the Patent and Market Court’s judgment states that the trade mark is a slipper with a certain design and with certain decorative elements that can be seen from above and from the side. It is not fully covered at the back but is instead equipped with one heel strap. The slipper also seems to have a slightly reinforced sole and heel, which indicates that it is intended to be used mainly outdoors. According to Crocs, the most important features are that there are holes on the top and on both sides, the heel strap, flat rivets, a wide and round toe area and dotted fields and lines on the slipper’s sole along the outer long side. The fact that the slipper has holes on the side and on top is thus not apparent from the registered trade mark but may be considered when assessing the possible essential features. The holes on the slipper are also visible from the examples presented to the court. The various holes on the slipper and the lack of a back cover mean that the nature of the good may be determined as a ventilating slipper. The evidentiary procedure in the case has revealed that such footwear can be designed in slightly different ways. As for the assessment of what constitutes the essential features, I have the same opinion as the majority. Essential features of the currently ventilated slipper are thus only the holes on the top and on the sides as well as the heel strap. I also make the same assessment as the majority regarding the heel strap, i.e. it has a generic function for the current type of slipper. The evidentiary procedure in the case has revealed that there are many different variants of holes for ventilating slippers. Holes on the different sides of ventilated slippers are thus features that consumers can be expected to demand even if such slippers are provided by competitors of Crocs. There is thus in trade mark law a ‘need’ for these shapes and properties of ventilating slippers to remain free. Crocs has not claimed that the closer placement of the holes in relation to each other has any particular significance. The holes on the slipper are thus also generic for the function of a ventilating slipper without a back cover. The essential feature thus means that the slippers in question only consist of a shape that results from the nature of the good and that there exists a ground of refusal of registration according to Chapter 2, § 4, first paragraph of the Trademark Act, taking into account the stated purposes behind the provision. On other issues, I agree with the majority. Translated from the Swedish by Branka Marusic. Sweden Case note by Branka Marusic* Introduction In 2008, Crocs Inc. applied for a three-dimensional trade mark registration in Sweden for its ‘Crocs Classic’ footwear. This registration was initially rejected by the Swedish Intellectual Property Office due to the lack of distinctiveness of the mark. However the three-dimensional mark was registered after Crocs Inc. submitted evidence in support of the trade mark’s distinctiveness. In the period between 2014-2015, ÖoB – a Swedish discount store – advertised and sold footwear that, in the opinion of Crocs Inc., infringed their three-dimensional trade mark. Crocs brought an action against ÖoB, claiming that ÖoB’s promotion and sale amounted to trade mark infringement of ‘Crocs Classic’. ÖoB then counterclaimed that the ‘Crocs Classic’ trade mark registration was invalid. In the procedure in front of the Swedish Patent and Market Court, the three-dimensional ‘Crocs Classic’ trade mark was revoked in accordance with Chapter 2, § 4 of the Swedish Trademark Act, since in the opinion of the court, the shape of the mark derives from the nature of the goods themselves and the shape of goods was also necessary to obtain a technical result. The Swedish Patent and Market Court considered that the essential features of the ‘Crocs Classic’ mark consisted of five different features (holes on the top, holes on each side, the heel strap, flat rivets, and wide toe-area), and the function of each feature could typically be attributed to the basic functions and properties of the type of footwear in question. Crocs appealed the judgment both on the grounds for revocation of the trade mark and infringement, and the Swedish Patent and Market Court of Appeal decided to separate two appeal grounds, by first deciding in an interlocutory judgment whether there were grounds for revocation of the trade mark. Judgment of the Swedish Patent and Market Court of Appeal The Swedish Patent and Market Court of Appeal considered three issues. The first discussed if the trade dress of the shape of the trade mark falls into a category of shapes that should remain to be free from registration (Freiheitsbedürfnis1). The second issue looked at whether the essential features, as described by the Swedish Patent and Market Court, can be labelled as deriving from the nature of the goods themselves and if the shape of goods was also necessary to obtain a technical result. The last issue was whether the revocation can be based on the trade mark’s lack of distinctiveness. Regarding the trade dress of the shape falling into the category of shapes that should remain free from registration, the Swedish Patent and Market Court of Appeal only slightly touched on this concept. It stated that the idea of shape to remain free from registration only becomes relevant when there is a public interest that is considered to outweigh the interests of the individual company. In this case there was no specific public interest that would require the trade dress of the footwear to remain free from registration. Furthermore, in the dissenting opinion it was argued that certain essential features of the mark should remain free, such as the placement of the holes for ventilation purposes, though this was not developed further. Regarding the grounds for refusal for registration, the Swedish Patent and Market Court of Appeal, discussed the findings of the Swedish Patent and Market Court and whether essential features of the trade mark that form the shape of the mark are the result that derives from the nature of the goods themselves, and if the shape of goods was also necessary to obtain a technical result. The Swedish Patent and Market Court of Appeal narrowed down the essential features to only the heel strap and the holes on the top and on each side. It also concurred with the Swedish Patent and Market Court that the heal strap is a generic feature. As for the holes the Court found that in the context of the trade mark registration they must be understood as holes with the number, size, and detailed design as well as the location that appears from the trade mark registration. It continued that the holes have the function of increasing ventilation. Since this ventilation can be accomplished by altering the position of the holes and varying their numbers, it found that such shape does not result from the nature of the goods, and therefore it differed in the opinion from the Swedish Patent and Market Court. Furthermore, it also stressed that the design and location of the holes cannot be considered to give the good a substantial value, and therefore the shape of the goods cannot be considered necessary to achieve a technical result either. The dissenting opinion did not agree with this finding, stating that the holes should also be considered a generic feature since the placement of the holes does not bear any significance for the function of ventilation of the footwear. Regarding the last issue of distinctiveness, the Swedish Patent and Market Court of Appeal scrutinised the evidence presented by Crocs in the form of sales figures and a survey that were meant to prove acquired distinctiveness. As for the sale figures presented from the years shortly after the launch of the footwear in 2005, the court found that they only demonstrate that a fairly large number of pairs of the footwear were sold in Sweden. However, they do not give any real guidance about whether the actual shape of the good acquired distinctiveness through use. Furthermore, the court found that the survey questions were drafted in a way that did not provide guidance on acquired distinctiveness either. The survey, which was conducted in early 2008, showed a picture of the shoe from the side to the survey participants. The word ‘Crocs’ and the cartoon crocodile were masked in the picture, so these features were not visible. The survey participants had to answer several questions, including what they thought of when they saw the picture. Seventy four percent of the participants were able to say that the shoe is called ‘Foppatoffeln’ and 7% were able to recognise it as a Crocs product. By way of clarification, ‘Foppatoffeln’ is a common name for the Crocs footwear in Sweden, connected with the hockey player Peter ‘Foppa’ Forsberg who suffered from a heel injury, which caused him to wear the Crocs footwear on TV and in other public contexts. Furthermore, 54% of the survey participants agreed that ‘a shoe with this appearance originates from a specific company’ while 46% agreed with the statement ‘a shoe with this appearance can originate from any company’. The fact that the survey only offered a choice between these two options and gave no option of stating ‘do not know’ was interpreted by the Swedish Patent and Market Court of Appeal as a shortcoming, since it created an increase of the uncertainty in the interpretation of the response outcome. Primarily this relates to the response option that the shoe could originate from any company, which was deemed to be misleading because it is obviously only companies that manufacture footwear that could be considered. Additionally, the marketing at the time of the survey had also taken place with a strong connection to the ice hockey legend Peter Forsberg, the word Crocs and the cartoon crocodile. According to the Patent and Market Court of Appeal it is not possible to draw any conclusions with sufficient certainty as to whether the shape of the shoe itself is perceived as a feature of the good, and therefore distinct, due to the above and the way the market survey was drafted and its results. In light of that, the Swedish Patent and Market Court of Appeal revoked the trade mark. Conclusion The current judgment raises three interesting questions. The first is whether some shapes (just like some signs) are out of the scope of protectability, and therefore should remain free. In this specific case, the shape of the footwear was not deemed to be such a shape. However, the Swedish Patent and Market Court of Appeal touched upon this issue by highlighting that the trade mark protection can be used to circumvent the limitation of the protection period that applies to other intellectual property rights. More specifically, unlike other intellectual property rights that have a specific period of protection, trade mark protection can in theory last in perpetuity if maintained and prolonged. This is more so, in situations where a certain product can attract the protection of two sets of intellectual property rights.2 In those instances (but not exclusively) in trade mark, interested third parties can invoke the defence of the right to remain free. The right to remain free from protectability is a legal concept that is based on the idea that certain signs should not be monopolised.3 Moreover, the legal concept of the right to remain free also encompasses signs which describe any characteristic whatsoever.4 The Swedish Patent and Market Court of Appeal builds on this by stating that the essence of the right to remain free defence is that signs remain free on the basis of public interests that are considered to outweigh the interests of the individual company. In this present case the shape of the footwear did not present such a public interest. Nevertheless, in the dissenting opinion it was questioned whether certain shapes that were previously protected by other intellectual property rights are shapes for which a defence of the right to remain free can be used. Further, can such shapes (or essential features, as the dissenting judge suggests) become generic enough to be out of the scope of protection? This could be interpreted as a signal that trade mark protection should not be misused for prolongation of a lifespan of protection of a shape, or for the monopolisation of shapes and removal of them from the public arena. The second interesting question was the decision of the Swedish Patent and Market Court of Appeal to deem the ways in which the technical feature of placement of the holes used for ventilation to be infinite. If we observe the size of the footwear, it is rather unlikely that holes for ventilation that exist only on one part (while the other part is opened) can in practice be placed in different positions. It is true that the size of the holes can vary, but this still does not increase the margin of manoeuvre of the manufacturer when deciding on the size of the holes and their placement for the purpose of ventilating the inner side of the closed part of the shoe. The practical consideration of balancing of the technical feature (holes) and the purpose to be achieved by it (ventilation) might not, therefore be infinite. In this regard the analysis done by the first instance court and the dissenting opinion might be more convincing than the judgment by the Swedish Patent and Market Court of Appeal. Even if the technical feature of the holes is different by positioning, size or number, and the marks are confusingly similar, this does not mean that the ‘Crocs Classic’ trade mark could coexist on the market with a confusingly similar mark and cannot be protected. Lastly, the third question is more practical and concerns surveys. This practical question relates to how much care should go into drafting, tailoring and conducting surveys in trade mark cases. The scrutiny of the Swedish Patent and Market Court of Appeal in the present case signals that a higher level of diligence is needed in the drafting of questions when it comes to surveys. More specifically, this involves the creation of options for answers that cover a wider range of trade mark perception on the market, and not only the ones that portray the polar extremes. This means that the survey must cater for options that allow persons answering the questions to express their perceptions, but also their lack of any perceptions. More specifically, surveys that are tailored to prove a thesis made by the company that is conducting them will not be considered valid if such surveys do not have options that demonstrate a sufficient margin of variation in the opposite direction. Footnotes * Doctoral Candidate at Stockholm University. 1 See: Joined Cases C-108/97 and 109/97 Windsurfing Chiemsee v Huber & Attenberger ECLI:EU:C:1999:230; Case C-363/99 Koninklijke KPN Nederland NV v Benelux-Merkenbureau ECLI:EU:C:2004:86. 2 To that effect, see for design and copyright Case C-683/17 Cofemel EU:C:2019:721, Case C-833/18 Brompton Bicycle EU:C:2020:46. 3 To that effect, see Case C-108/97 Windsurfing Chiemsee EU:C:1999:230; Case C-108/97 Windsurfing Chiemsee EU:C:1998:198, Opinion of AG Cosmas. 4 To that effect, see Case C-363/99 Koninklijke KPN Nederland EU:C:2004:86, para 102. © Published by OUP and CH Beck on behalf of GRUR e.V. All rights reserved. For permissions, please email: journals.permissions@oup.com and GrurInt@ip.mpg.de This article is published and distributed under the terms of the Oxford University Press, Standard Journals Publication Model (https://academic.oup.com/journals/pages/open_access/funder_policies/chorus/standard_publication_model)
TI - Registration of Three-Dimensional Marks Consisting of the Shape of Footwear
JF - "GRUR International: GRUR Journal of European and International IP Law (Formerly: Gewerblicher Rechtsschutz und Urheberrecht, Internationaler Teil)"
DO - 10.1093/grurint/ikab097
DA - 2021-08-01
UR - https://www.deepdyve.com/lp/oxford-university-press/registration-of-three-dimensional-marks-consisting-of-the-shape-of-0e27ken3O4
SP - 1
EP - 1
VL - Advance Article
IS - 
DP - DeepDyve
ER -