A comparative study of fashion and IP: trade marks in Europe and Australia

A comparative study of fashion and IP: trade marks in Europe and Australia Abstract The authors Violet Atkinson is a lawyer at Cronin Litigation and also at Bond University, Gold Coast, Australia; Viviane Azard is an attorney-at-law at Bardehle Pagenberg, Paris; Julien Canlorbe is attorney-at-law, Partner at Meridian Avocats, also in Paris; and William van Caenegem is at Bond University, Gold Coast, Australia. This article Design registration and copyright are the central mechanisms for IP protection of the appearance of fashion garments, and trade mark law may seem of little relevance at first glance. However, since the adoption of the World Trade Organization’s TRIPS standards for registered trade mark protection, the dividing line between product and trade mark has become much less pronounced. In particular, the shape of goods and colours as such are eligible for trade mark registration. Other decorative features, such as patterns (the Burberry check for instance) or stitching, and other non-traditional trade marks may also be registered under certain conditions. This presents interesting opportunities to fashion labels, which can obtain perpetual protection for some of their most striking or memorable visual features through trade mark registration. This article compares the state of the law on this topic in Australia and France, contrasting jurisdictions in terms of the underlying legal systems but also in terms of the relative importance of the fashion industry. Although the formal requirements and tests of the law in the two countries seem quite different, very similar results are obtained in many respects. In both countries there are serious obstacles to registration, and once a non-traditional mark is registered it is not easy to obtain a remedy against a competitor who adopts a similar feature. The concept of use of a mark as a mark, both for the sake of registration on the basis of acquired distinctiveness, and in enforcement, concerns judges in both jurisdictions. Infringing use is also problematical. 1. Introduction: from badge of origin to style feature Design registration and copyright are the central mechanisms for IP protection of the appearance of fashion garments, and trade mark law may seem of little relevance at first glance.1 However, since the adoption of the World Trade Organization’s TRIPS standards for registered trade mark protection,2 the dividing line between product and trade mark has become much less pronounced. In particular, the shape of goods and colours as such are eligible for trade mark registration. Other decorative features, such as patterns (the Burberry check for instance)3 or stitching, and other non-traditional trade marks may also be registered under certain conditions. What amounts to a ‘sign’ that can be registered as a trade mark is no longer defined by reference to a limited and exhaustive statutory list. For fashion houses this development holds the promise of obtaining exclusive rights over some of the most critical visual features of their garments. Unlike copyright and especially design registration, trade mark registration can be indefinitely renewed. Fashion houses are aware of the potential of trade marks to monopolize inherent aspects of their products, and they take a proactive approach to register various non-traditional marks with a view to profit maximization. They have developed diverse strategies: signs might be used in a more emphatic decorative fashion by varying their normal placement or size (for example the Adidas three stripes or the Tommy Hilfiger ‘H’),4 or by multiplying references to them on garments, as decorative patterns (the Louis Vuitton pattern for instance).5 Alternatively traditional decorative elements might be used in a branding manner to improve the chances of obtaining trade mark protection (eg the Burberry check).6 Colours as such are also accepted as potentially registrable trade marks, which presents opportunities for fashion businesses, particularly if they are closely associated by consumers with a specific colour (for instance, the Louboutin red sole).7 However, in practice, there are serious hurdles to overcome both in terms of registration and enforcement of such non-traditional marks. These issues are considered in further detail below in relation to Australian and EU law, with a focus on the situation in France. France is historically the epicentre of fashion and, despite growing competition, remains a leading country in the fashion industry.8 Despite the ambition to harmonize EU IP law, there remain considerable differences between the various EU Member States. By contrast, Australia is a newly emerging force in fashion design and brand development, although it has a traditional strength in swimwear and surf wear sectors.9 Australian fashion designers are very concerned with the IP protection of their garments and often point to perceived deficiencies in the copyright/design system.10 These perceived deficiencies make the trade mark alternative all the more attractive. The two jurisdictions present relevant contrasts regarding our core issue: how easy it is to obtain trade mark registration for decorative aspects of garment fashion, and how effective such registration can be against imitators.11 2. General requirements for trade mark registration This section is concerned with the most relevant absolute grounds of refusal in relation to trade marks.12 In Europe, trade marks can be registered at a national or EU level. The Trade Mark package 201513 permits the registration of a broader range of signs (eg, smells, tastes and textures) by having removed the graphic representation requirement (Article 4 of the EU Regulation and Article 3 of the EU Directive). Protecting textures by trade mark registration may be of particular interest to fashion houses. However, to be registrable, the representation of texture signs must be clear, precise, self-contained, easily accessible, intelligible, durable and objective. In Australia, the Trade Marks Act 1995 (Cth) (TMA) permits any ‘sign’ to be registered as a trade mark. The Act provides a non-exhaustive list of such signs (including shape of goods and packaging). But anything that performs the functions of a sign could be registered; that of course requires a capacity to distinguish (see further below), but it is also a requirement that the mark can be graphically represented (s. 40 TMA). In terms of fashion in the broadest sense, this might present challenges for scent marks in particular, but also for texture marks. However, it is also significant that the exclusive rights of the trade mark owner are confined to the representations in the application. Therefore an applicant will have to consider carefully how to categorize and represent a mark: this issue has arisen in the context of the Louboutin shoe marks around the world, for instance. Both in Europe and Australia, a trade mark, whether traditional or non-traditional, must be distinctive in order to be registered. This means that a trade mark must be capable of distinguishing the goods and services of an applicant from those of a competitor. Additionally EU regulations have specific express exclusions, which prohibit the registration of certain signs. These exclusions as well as the distinctiveness requirement are warranted by the need to balance protection of the trade mark owner’s goodwill and legitimate availability of generic signs to competitors. 2.1. Express exclusions In Australia every mark, whether traditional or non-traditional, is dealt with in the same manner when it comes to distinctiveness. There are no a priori exclusions, because it was considered that such express exclusions as for instance exist in Europe are in substance mere cases of lack of distinctiveness.14 By contrast, EU law (both the Directive15 and the Trade Mark Regulation)16 provides for express exclusion of certain types of signs. Excluded are signs that consist exclusively of the shape of goods and result from their nature; the shape of goods which is necessary to obtain a technical result; and of a shape which gives substantial value to the goods. The exclusions thus apply to shapes that are exclusively natural, functional or ornamental. In effect there is a non-rebuttable presumption that such trade marks are not capable of distinguishing goods. The exclusions are absolute rather than relative and must be applied independently.17 We deal with these exclusions before considering the broader requirement of distinctiveness and its implications for fashion items. 2.1.1. The nature of the goods This exclusion prohibits a sign which results from the nature of the goods themselves. Shapes that are indispensable to the function of the goods in question must, in principle, be denied registration, even if the producer of those goods makes an essential personal contribution to the particular shape. The prohibition has the underlying purpose of preventing trade mark law from granting a monopoly on functional characteristics of a product to the detriment of competitors. This has the effect of allowing competitors to develop other forms of the good in question.18 In Australian law the equivalent question is addressed in terms of distinctiveness: will other traders acting with proper motives wish to adopt the same or a substantially identical or deceptively similar shape for their goods? The answer is likely to be ‘yes’ where the shape is entirely functional or has a particular signification in the context of the goods for which its registration is sought. It will also be yes where the shape has a technical function (see (ii) below).19 Thus the approach to distinctiveness has a similar tenor to the express exclusion in France and the rest of Europe. In fashion, the main case law concerning this prohibition is related to the sole of shoes. The most famous French case concerns the Louboutin trade mark representing a red sole on a woman’s shoe.20 The French Supreme Court held that neither the shape nor the colour was determined with sufficient clarity and that if the trade mark could be identified as a sole, its shape seemed to be imposed by its nature.21 The trade mark was therefore invalidated. More recently, the Paris District Court ruled that a registered trade mark representing a non-slip spiked sole22 was invalid on the ground that its shape was dictated by the nature of the product.23 The court held in particular that the few other distinctive elements were insufficient to identify the product in question. Thus, if the shape is represented in combination with sufficient distinctive elements, it might be adopted as a trade mark. 2.1.2. Necessary to obtain a technical result This exclusion prohibits a sign representing a shape that is necessary to obtain a technical result. For example, the Court of Justice of the European Union (CJEU) recently ruled that the Rubik's Cube shape is not registrable as an EU trade mark given that this shape included a technical solution consisting of its rotational capacity.24 In this case, the General Court had taken the view that the technical solution characterizing the Rubik’s Cube did not result from the characteristics of that shape but from an internal and invisible mechanism of the cube and thus considered that the Rubik’s Cube shape was eligible for trade mark protection. Contrary to what the General Court had found, the CJEU pointed out that the essential characteristics of the cube shape in issue had to be assessed in light of the technical function of the actual goods represented. In particular, one should take into consideration non-visible elements of that shape, such as its rotating ability. Moreover, the CJEU specified that the fact that the registration was sought for ‘three-dimensional puzzles’ in general, without restriction to those which have a rotating ability, cannot preclude the technical function of the actual goods represented by the cubic form in question from being taken into account. It may even make it essential, since the decision is liable to affect all manufacturers of three-dimensional puzzles with cube-shaped elements. The existence of other shapes that achieve the same technical result does not render the ground for refusal of registration inapplicable. In fashion, there has never been an application of this ground in case law. That being said, such a prohibition might apply to future texture trade marks, which could represent a technical solution. 2.1.3. Substantial value to the goods The third exclusion prohibits the registration as a trade mark of signs that give substantial value to the goods, that is, those which determine commercial attractiveness (for example, the shape of an haute couture garment), but is not be limited purely to the shape of products having only artistic or ornamental value.25 In the landmark CJEU case of Benetton v G-Star,26 G-Star registered two shape marks representing the shape of jeans and covering in particular the stitching and cuts on the kneepads of the trousers.27 In its counterclaim, Benetton sought an annulment of the two trade marks on the ground that as a result of their beauty or original character the shapes at issue determined the market value of the goods to a great extent. In Benetton’s view the consumers would buy the G-Star jeans because they regarded the stitching and cut of the jeans as attractive and not because they recognized the stitching and cut as a G-Star product. G-Star, for its part, argued that it had conducted intensive advertising campaigns to give these particular jeans recognition as a G-Star product. Therefore, the reputation of the jeans at issue was, according to G-Star, largely attributable not to the aesthetic attractiveness of the shape but to consumer recognition of the trade mark. However, according to the CJEU, a sign which initially consisted exclusively of a shape giving substantial value to the product can never become a valid trade mark regardless of the intensive advertising campaigns focused on the attractive shape of the product. The impediment to registering such shapes as a trade mark at a later stage will thus never be removed; in contrast, in Australia the matter would be decided purely on the basis of capacity to distinguish, in theory a shape initially inspired by aesthetics could become distinctive enough by use to be registered on the basis of acquired distinctiveness (including because of promotion and advertising).28 This prohibition has been repeatedly considered by French courts. In 2016, the Paris District Court cancelled an EU trade mark consisting of the shape of a watch along with the word ‘ICE’ on the ground that ‘the shape of the product is to be regarded as the dominant element of the mark which gives substantial value to the product’29. One can criticize the absolute and radical prohibition, based as it is on the subjective notion of ‘substantial value’. The Max-Planck Institute, concerned with the absolute nature of the prohibition, recommended either an abrogation of the provision or to amend it by allowing registration of signs consisting exclusively of the shape which gives substantial value to the goods when such signs have acquired distinctiveness through use.30 This would be in line with the current situation in Australia. However, the EU Commission chose not only to retain the exclusion but to extend it, so that now the objection applies not only to shape marks but to any sign. Thus, if any characteristic of a sign, including its shape but perhaps also its colour or pattern, gives substantial value to the goods then the sign cannot be registered. This is of great significance to the fashion industry, which has a particular interest in exactly such signs. The express exclusions result in some key differences between EU and Australian laws regarding the requirement for trade mark registration. In the fashion field they prevent time-limited rights from being transformed into a trade mark monopoly. The exclusions do not per se keep the sign free for other competitors but shift the legal setting to design, copyright or patent law. Without trade mark protection, businesses in the fashion industry such as G-Star can only rely on design and copyright to obtain exclusivity in the shape of their products. 2.2. Distinctiveness of a decorative mark In Europe and Australia distinctiveness is a core requirement for registration of both traditional and non-traditional marks. Distinctiveness goes to the heart of a sign’s ability to function as a badge of origin. Registration is thus not available to signs that consist of the necessary usual designation of the goods or services for which it is sought, or that are descriptive of characteristics of those products or services. Distinctiveness is a relative concept and trade mark law combines aspects of inherent and acquired distinctiveness. The less inherently distinctive a sign is, the more the applicant for registration will have to prove that it has acquired distinctiveness in the mind of the consumer. Where a sign is inherently lacking in distinctive character, the ability of a given mark to distinguish one trade mark owner’s goods from those of another will depend on the extent of its use as a trade mark. Inherent characteristics of the goods, such as their visual appearance or decoration, will not be normally perceived by consumers as a badge of origin. Decorative features such as a colour, pattern, stitching or garment shape are features of a garment itself, and thus not inherently capable of distinguishing goods as to their commercial origin. However, with use as a trade mark, they can become registrable on the basis of acquired distinctiveness. Naturally the extent to which such signs are already in use by other traders will also be determinative of their capacity to distinguish. 2.2.1. Inherent and acquired distinctiveness In Australia a sign that has absolutely no inherent distinctiveness, such as a simple colour or a functional or purely decorative aspect of a garment, can in theory achieve registration by way of proof of acquired distinctiveness (ie through use as a trade mark). There are few, if any, examples of this occurring in relation to fashion, but by analogy the colour purple (the ‘Whiskas Purple’) was successfully registered in Mars Australia Pty Ltd v Société des Produits Nestlé SA.31 Mars Australia developed a particular shade of purple colour and used it systematically for 10 years in Whiskas cat food advertising and packaging. The Federal Court of Australia found that the ‘Whiskas purple’ could function as a trade mark because it was capable of distinguishing Mars’ goods. It had been specially developed, was extensively advertised and a survey revealed that consumers associated the shade with Whiskas cat food.32 The concern that other traders should be free to utilize purely decorative or functional features can thus be displaced by sufficient proof of acquired distinctiveness. This could for instance apply to a colour or shape mark used in or on a fashion item (the Tiffany blue is registered in Australia, as is the Gucci buckle). The Australian TMA also operates on the basis of a presumption of registrability, which now also (since recent amendments; see section 33 and 41) applies to the question of distinctiveness. Only if the examiner finds a ground for refusal is clearly established should an application be rejected. In Europe, the criteria for assessing the distinctive character of three-dimensional trade marks consisting of the appearance of the product are not dissimilar from those applicable to traditional trade marks. The distinctive character of these trade marks is thus assessed by taking into account the perception of the public to which the trade mark in question is directed and the products and services for which protection is sought. However, for the purposes of assessing distinctiveness, the relevant public’s perception is not necessarily the same in relation to all types of marks, and may be more difficult to establish in relation to certain categories of marks. Public perception of three-dimensional trade marks is relatively low given that ‘average consumers are not in the habit of making assumptions about the origin of products on the basis of their shape’.33 Therefore, it was held that ‘only a mark which departs significantly from the norms and customs of the sector and thereby fulfils its essential function of indication origin, is not devoid of any distinctive character’.34 For example, the shape of a handbag has been held not to have any inherent distinctive character.35 This makes the bar for distinctiveness of a three-dimensional mark quite high. It should be noted that this standard has then been transposed to two-dimensional marks36 and to figurative marks consisting of a part of the shape of the product that its represents ‘as the relevant public will immediately and without further thought perceive it as a representation of a particularly interesting or attractive detail of the product in question, rather than an indication of its commercial origin’.37 Validity is, of course, influenced by the products covered by the trade mark registration. An example of this subtle appreciation is provided by the Louis Vuitton case for a locking device where the same trade mark has been considered as valid when applied to certain products such as rings, watches, but invalid for other products such as jewel boxes or travelling bags.38 Further, unlike the EU Directive and the EU regulation, the French intellectual property code does not set a specific requirement of distinctiveness. However, the INPI and French courts tend increasingly to assess the validity of a trade mark on the basis of distinctive character autonomously,39 so that there is a resulting material difference in the assessment of distinctive character between EU and French courts. The particular severity of EU courts’ assessment can be seen in the Voss of Norway.40 In this case, the CJEU dismissed an appeal against a declaration of invalidity made by the General Court which held in particular that (i) the fact that the EUIPO Board of Appeal did not establish that there were other similar bottles on the market does not affect the 3-D shape being devoid of any distinctive character and that (ii) even if the applicant’s bottle is ‘one of a kind’, that does not by itself mean that it departs significantly from the norms of the sector and that it therefore has distinctive character. French case law adopts a more liberal approach. For instance in fashion, the Louis Vuitton locking device has been considered as devoid of distinctive character by EU courts.41 By contrast French courts upheld its distinctiveness on the ground that ‘None of the locking devices submitted by the defendant reproduce or come close to the combined lines of the plaintiff’s 3-D mark.’42 Similarly, according to the General Court, the trade mark consisting of the shape of a Bottega Veneta handbag, which was rectangular and had rounded edges, does not depart significantly from the norms and customs of the sector as they result from the applicant’s internet search,43 whereas the shape of another Bottega Veneta handbag has been held to be distinctive by French courts given that the handbags submitted by the defendant did not reproduce the features of the Bottega Veneta handbag and thus that the shape of the plaintiff’s 3-D mark departs from the norms and customs of the sector.44 2.2.2. Acquired distinctiveness of a decorative mark It may be that such features have become almost exclusively associated with a particular fashion brand, and have come to perform a ‘badge of origin’ function in the eyes of consumers. In other words, such features might acquire, through use as a trade mark, sufficient distinctiveness to qualify for registration as a mark. However, the more commonplace and standard the feature is, or the more associated with a particular function or standard visual aspect of a garment, the less likely it is to achieve sufficient distinctiveness. Critically important is the fact that long-standing use or application of a particular feature does not in and of itself qualify as a basis of acquired distinctiveness. The use must be perceived as performing the function of a trade mark (ie a badge of origin). The more striking, unusual, frivolous or unconnected to the nature and function of a garment a feature is, the more likely it will be perceived as performing a trade mark function. In other words, just having a certain pattern or a particular colour on a dress consistently over time does not mean that the pattern or colour functioned as a trade mark. In the EU, the applicant must now establish that the trade mark has acquired distinctiveness in the territories of each Member State in which the trade mark lacked inherent distinctive character,45 rather than in relation to a substantial part or the majority of the relevant public in the EU as previously held.46 Furthermore, distinctiveness can be assessed either before or after the trade mark’s registration. In France the distinctive character of a trade mark used to be assessed at the time of the application. However, in the venteprivee.com case,47 the Paris Court of Appeal took into account the use that has been made of the trade mark subsequently to its registration. To do so, the court interpreted Article L.711-2 of the French Intellectual Property Code, which states that the distinctive character can be acquired through use in the light of Article 3(3) of the EU Directive 2008/95, specifying that a trade mark shall not be refused registration or be declared invalid … if, before the date of application for registration and following the use which has been made of it, it has acquired a distinctive character. Any Member State may in addition provide that this provision shall also apply where the distinctive character was acquired after the date of application for registration or after the date of registration. This case law foreshadows the transposition of the new Trade Mark Directive, which made clear that distinctive character may be also be assessed after the date of registration.48 In the fashion field, EU courts have held in particular that a position mark consisting of a red rectangular label at the left upper edge of a pocket of a pair of trousers, appears as having acquired a distinctive character through use.49 A critical distinction regarding distinctiveness between France and Australia is that in Australian law one can register a trade mark purely on grounds of acquired distinctiveness, whereas in Europe acquired distinctiveness is irrelevant where one of the a priori exclusions applies, for example where substantial value is added to the product by the mark.50 The applicant must establish that at the time of application, use of the mark as a mark has been sufficient for it to be considered capable of distinguishing the goods or services in question. A particular feature of a fashion item may perform a decorative or practical function, but even so become seen as a ‘badge of origin’. That could be the case for a certain colour consistently applied,51 for instance not just to goods but to packaging and in the context of advertising, or to an otherwise simple feature with structural overtones. Thus the implication of the Adidas decision in Australia is that if a particular feature, otherwise simple and visually appealing, is consistently applied in a particular position and manner on goods it can be held to be sufficiently distinctive.52 There can be sufficient use as a mark even where the feature also performs a decorative function, or other non-trade mark function. 3. Various examples of decorative marks Relevant factors for assessing a shape mark’s ability to fulfil its essential origin function apply equally to pattern, shape, colour or position marks. To be distinctive, the relevant consumer must be able to distinguish the sign from the normal appearance of the product such that it is likely to be understood as itself indicating origin, or the sign must depart significantly from the norms or customs of the sector. The questions can relate to the products proper or to some addition to the product such as the Gucci bridle trade mark, or the Louis Vuitton locking device. 3.1. The pattern of a garment Patterns are all the rage on clothing, footwear, textiles and more. Designers have even associated entire lines or seasons with particular patterns and had great success. Nearly every consumer can think of a pattern that is identified with one brand owner: the check of a Burberry coat, the monogram or checkerboard pattern on Louis Vuitton bags, or the stylized GG pattern on Gucci handbags. All comprise patterns that immediately act as source-identifiers. It should however be emphasized that, as seen in the section ‘Distinctiveness of a decorative trade mark’, EU courts are more severe than French ones in assessing the distinctiveness of a decorative feature of a garment. This is also apparent in relation to patterns. For example, at the EU level, the tartan trade mark from a German company was cancelled on the basis of a lack of distinctiveness.53 By contrast, the Burberry check was held distinctive by the Paris Court of Appeal.54 Patterns which are commonplace in the fashion sector and do not contain any eye-catching features lack distinctive character as a consumer will not perceive them as anything other than a mere decoration, except if they have acquired distinctive character through trade mark use made of them. It is, however, quite challenging to obtain registration as an EU trade mark. For instance, in April 2015 the Louis Vuitton damier pattern trade marks (the famous brown and beige chequerboard pattern and the light and dark grey version) were invalidated by the General Court for lack of inherent and acquired distinctiveness.55 The court found in particular that the chequerboard pattern was commonplace and did not depart significantly from the norms and customs of the leather goods sector. Furthermore, Louis Vuitton had proved the acquired distinctive character of its trade marks for some, but not all, of the EU Member States. Thus, the evidence was insufficient to prove the acquired distinctive character throughout the EU. There do not appear to be any court decisions concerning patterns for garments and apparel in Australia. However, in a published decision of a Delegate of the Trade Mark Registrar, opposition to the registration of a pattern described as ‘the patterning appearing on the strap of the flip-flop’ (quintessential Australian footwear) was successful.56 The opponent’s main submission was that the ordinary signification of the pattern was ornamentation. The pattern was not so imaginative or unique that other traders would not want to use it—as they had in fact done. The Delegate pointed out that matter that is purely ornamental or decorative is unlikely to function as a trade mark. The Delegate formulated some useful guiding questions to ask in relation to an ornamental feature, and whether it is ‘capable of distinguishing’ goods: Is it a ‘common’ basic shape or design? Is unique or unusual in a particular field; Is it a mere refinement of a commonly adopted and well-known form of ornamentation for a particular class of goods; and Has the same or similar sign been used to perform a trade mark function (ie inform the public about origin of product)? 3.2. Position marks Position marks comprise a specific sign and its position on and in proportion to a product. In Europe case law tends to underline the inherent low distinctiveness of those trade marks. Many position marks which did not depart significantly from the norm or customs of the sector have been denied registration and, in particular, the red aglets of a shoe,57 the orange colouring of the tip of a sock,58 the five parallel stripes of a shoe,59 the two parallel stripes positioned on the side of both sleeves of long sleeve shirts and on the lower part of panel pants60 or of a stylized flower on the lapel collar of a garment.61 The best way to save the position mark is to establish that the position mark or more generally a decorative trade mark has acquired a distinctive character through use.62 In the Australian context, a position mark is not considered a separate kind or category of mark, so the same general principle will apply to a shape mark or a colour mark. The essential question will be what exactly was used as the mark. 3.3. Colour marks In Europe, although neither the Directive nor the Regulation mention colour in the definition of a trade mark, it is established that lists within definitions are not exhaustive. Thus, any sign, including a colour as such, can become a trade mark if it satisfies the legal requirements. For this reason, French law expressly states that ‘the placement, combinations or nuances of colours’ could constitute a valid trade mark (711-1 IP code). Colours and combinations of colours have been increasingly used to distinguish and identify the origin of luxury and fashion products. For example, one could point to the Hermès orange, the shocking pink of Elsa Schiaparelli, the Balenciaga red and the blue hue of Richard Nicoll. A new Pantone shade called Nicoll Blue, has been even created in homage to Richard Nicoll.63 The selling power of colour can be traced to two sources: emotional imagery and the desire for individuality and personal expression through colour selection. However, colour as such will only have distinctive character in exceptional cases. In assessing whether a colour is capable of constituting a trade mark, it is carefully assessed whether a registration unduly limits the availability of colours in any way. For instance, in the Libertel Groep case, the CJEU considered that a mark consisting of a single orange rectangle and described as ‘orange’ without reference to any colour code was devoid of distinctive character within the Trade Mark Directive.64 The red featuring on the sole of Louboutin’s high heels underlines the subtlety of that issue. The French registration of Louboutin’s red sole trade mark was cancelled by the French Supreme Court since the trade mark description was found to be too vague because of a lack of precision of the colour.65 As a reaction, Mr Louboutin filed a new French trade mark application on 25 October 2011 covering a specific shade of red referenced by a Pantone code (Pantone 18.1663TP) and applied to the sole of a shoe. According to French case law, it is possible that the new Louboutin trade mark application could be successful in France. Indeed, it has already been held that the designation of the color by means of an identification code which is internationally known could suffice to satisfy the requirement of precision for a trade mark application. At EU level, the EU General Court has recognized the validity of Louboutin’s colour trade mark which was identified with sufficient precision.66 However, in 22 June 2017, the European Court of Justice’s advocate general, Maciej Szpunar, issued an opinion regarding the validity of the Louboutin trade mark consisting of the color red (panton 18.1663TP) applied to the sole of a shoe. According to him, said trade mark is “a mark consisting of the shape of the goods and seeking to protect a certain color in relation to that shape”. If the CJEU follows the advocate general’s opinion, Louboutin’s red sole trade mark will potentially be declared invalid under Article 3(1)(e)(iii) of the Directive according to which a trademark shall be liable to be declared invalid if the sign consists exclusively of the shape which gives substantial value to the goods. However, the concept of a shape which “gives substantial value” to the goods, within the meaning of that provision, relates only to “the intrinsic characteristics of the shape”, and does not take into account “the reputation of the mark or its proprietor”. To overcome the prohibition under Article 3(1)(e)(iii), Louboutin will thus need to prove that the attractiveness of its high heels arises from their reputation or from the reputation of the Louboutin company and not from the intrinsic value of the shape at issue. At the same time, the assessment must establish whether the relevant public can identify the origin of the goods or services from the mark and distinguish them from other undertakings. For example, In Think Schuhwerk v OHIM, shoes with red tips on the ends of shoelaces were found not to be distinctive because the colour of parts of the laces on a shoe are not usually perceived by the public as an indication of commercial origin.67 Nevertheless, a colour mark may acquire distinctiveness through use,68 unless the coloured shape is not registrable on the basis of a priori exclusions. In Australian law there are few court decisions directly related to non-traditional fashion trade marks. However, Louboutin successfully registered the famous sole in a particular shade of red,69 and this has seen Australian designer, PeepToe shoes, change their sole colour to purple.70 Cases relating to colour marks and shape marks for goods in other classes are relevant by analogy. As there are no a priori statutory exclusions in the Australian TMA, everything falls to be decided by reference to the legal standard of distinctiveness. As indicated above, the relevant provisions function on the basis of a presumption of registrability as well.71 On the face of it, therefore, there seem to be fewer obstacles to registration of shape marks or pure colour marks in Australian law. However, the courts have taken a careful and deliberate approach, insisting that common shapes and colours should remain available for competitors to use. Therefore if a shape is not a frivolous variation or addition to a basic form that competitors would legitimately expect to be able to adopt and use, it will not normally be capable of being registered. There are no published decisions that consider shape marks in fashion items, so we can only proceed by analogy from other matters. In Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks,72 the shape of a confectionery for children was able to be registered, because it did not sufficiently resemble a real insect or bug, and therefore did not potentially obstruct the legitimate use of a real-world shape in the manufacture of such confectionery by others (representative insect and animal shapes being commonly used for children’s confectionery, etc). In the same manner, standard structural elements of garments, shoes or apparel will not normally be eligible for registration of a trade mark; whatever is sought to be registered must be perceived as being capable of performing a trade mark function. A strap or reinforcement of a shoe is a structural element all should be able to adopt—as emerges indirectly from the Adidas decision.73 Similarly, in relation to colour, standard colours in common use in a particular sector or with a particular significance (such as red for emergency goods and services) will not normally be registered. However, a colour that is striking or unusual for the goods concerned may well achieve registration, such as the terra cotta colour for agricultural plastic piping which is almost universally a standard white.74 As, in Australian law, it is theoretically possible for colours as such to be registered on the basis of acquired distinctiveness (ie on the basis of previous use as a trade mark), two main issues arise. First: are others in the market also actual or potential users of the colour? Secondly: has the sign acquired distinctiveness because of its use as a trade mark? The character of the use is critically important, and the identification of that character is by reference to consumer perception. Since there are no Australian decisions concerning colour trade marks for fashion items, we again have to proceed by analogy. In Re BP PLC,75 a green colour was unsuccessful in obtaining trade mark protection because the shade was not adapted to distinguish the goods and services. In this decision the Delegate found that whilst there was an association between the particular green and the oil and petrol company BP, the association alone could not establish that the trade mark had acquired the secondary meaning of distinguishing the applicant’s goods and services.76 Ultimately, it was found that consumers would not take any use of the green in relation to all designated goods and services as indicating those goods and services provided exclusively by the applicant. 77 The inherent nature of the alleged mark is one reference point—is it in some way unusual in the context of the goods (eg a non-standard colour such as the Cadbury violet)78 or a frivolous shape (such as one might find on a perfume bottle)? Consistency of use in relation to a range of goods (eg a number of different garments in a range) may also indicate use as a trade mark. Finally, use that appears to consumers as serving the purpose of distinguishing goods or identifying their commercial origin is most important. If use only appears to serve a functional or decorative purpose, then it will not amount to trade mark use and will not be able to support an application on the basis of acquired distinctiveness. What might be perceived as trade mark use was considered in the Philips v Remington case, where the prominent display of a particular feature, its pictorial representation on packaging and so on were advanced as examples of what might appear as trade mark use.79 However, certain colours and features are so standard or so inescapably functional (eg red for medical or emergency services, green for environmental) or decorative that it is hard to imagine that they would ever be able to achieve registration by trade mark. In particular in the fashion world, numerous features of garments and apparel are standard because of functionality, tradition or trend. Certain decorative patterns and features of ornamentation may not be current in a particular season, but return with cyclical regularity as standard variations on a theme. The same can be said about colours. Some aspect of a fashion item will have to stand out as different from the usual pattern of reoccurring regular trend-governed variations to attract possible trade mark protection. Thus, relevant comparative observations in terms of fashion are that where a garment feature represents unadorned functionality it will be virtually impossible to register it in Australia and in Europe: in Europe, the solution is established by express statutory prohibitions, whereas in Australia this results from the application of general distinctiveness requirements. Where the mark concerns a usual or habitual colour, pattern or ornamentation, the registration might be difficult as well. But it is not impossible for a very particular feature which combines a functional or decorative element with something additional or atypical to be registered after extensive trade mark type use. The validity is nevertheless always conditioned by its distinctiveness. A standard colour in the context of the industry or category of goods concerned as well will be extremely difficult to register in Australia and Europe. Since there is commonly a wide variety of colours used in fashion, it is safe to say that registering a single shade of primary colour as such is virtually impossible, except if the colour has acquired distinctiveness through very long and consistent use (for instance: Hermès orange, or the red Louboutin shoe sole). In some cases, the application does not really relate to a colour as such, but a colour in a particular position on a product. In other words, the major distinction between France and Australia is that under Australian law, one can in theory register a trade mark which has acquired distinctiveness, whereas in Europe acquired distinctiveness is irrelevant where one of the a priori exclusions applies, as noted above. For example, in Benetton v G-Star, the shape of the product gave substantial value and the registration was rejected.80 In practice, in fashion, most cases involve distinctiveness issues (eg, the Louis Vuitton damier pattern on a locking device, the Louboutin red colour, or the Burberry check), and very few cases are related to the a priori exclusions. 4. Infringement of non-traditional marks There is limited utility in achieving registration of a non-traditional trade mark, if it is too difficult—or impossible—to prove infringement. The first part of the test to be conducted lies in the comparison between the marks at hand, the purpose of which is notably to determine whether they are identical or if they bear similarities that can mislead consumers. In a case concerning infringement of a non-traditional mark, a plaintiff shall also especially have to establish use of the registered mark (or a substantially identical or deceptively similar mark) ‘as a trade mark’ by the defendant. Since trade mark’s role is to provide consumers with a reliable indication of the commercial origin of the goods, only unauthorized use of a sign that might be interpreted by relevant consumers as badging an origin may infringe rights in a registered mark. The question as to whether the use of a sign is ‘as a trade mark’ or for a purely decorative purpose is probably one of the thorniest issues as regards to the use of patterns, colours, figurative drawings and non-traditional shapes that are used in the field of fashion industry. 4.1. Comparison of the prior mark and the impugned sign 4.1.1. Existence of a likelihood of confusion in the consumer’s mind The existence of a likelihood of confusion in the consumer’s mind does not have to be proved each time a trade mark use is alleged to infringe a registered trade mark. In Australia, as long as the goods on which a (substantially) identical mark is allegedly used are of the same kind as those for which the mark is registered, liability follows automatically: there is no need to prove consumer confusion.81 Liability is arguably strict. A similar situation exists in the EU; where the registered goods and the goods of the alleged infringer are the same and the trade marks are identical, there is no requirement of confusion.82 In our paradigm case (for instance, a competitor applies a Burberry check to the inside of a raincoat), there is no doubt as to whether the goods are similar or not. Proving likelihood of confusion could be required if the mark is allegedly used on goods that are not covered by the registration, or if there are some differences between the registered mark and the mark used by the defendant.83 In Australia as in Europe, it is a significant issue if the mark as used by the defendant is somewhat different from the mark registered: a slightly different pattern, a different shade of a colour, or some modification of shape. The risk of confusion should be assessed globally, taking into consideration both similarities between the signs, and the products or services.84 Such a test is applied to traditional marks as well as to non-traditional marks. 4.1.2. Impact of the use of the prior mark in the assessment of a likelihood of confusion EU and French judges traditionally adopt a global and objective conception of the risk of confusion. Since the rights in the trade mark are granted by the registration with the European Union Intellectual Property Office (EUIPO) and not through use of the mark on the market, comparison between the marks normally has to be assessed by reference to the impugned sign with the prior mark as registered and not as exploited. In this respect, the General Court stated for example that: In order to assess the similarity between a complex figurative mark and an earlier word mark, the particular graphic or stylistic aspects that the earlier mark might adopt are irrelevant. In any event, the assessment of the similarity with the earlier word mark, which is the only relevant assessment in the present case, should not be replaced by an assessment of similarity with a figurative element which does not form part of the protection conferred by the earlier registration.85 The comparison is therefore conducted in abstracto, with reference to the registration of the sign at hand, which means that the conditions of commercialization of the products, as well as the way the prior mark is used amongst consumers, are irrelevant to assess whether consumers might be subject to a likelihood of confusion. This makes the approach of trade mark infringement different from the unfair competition approach. However, the above statement must be qualified, because it has been conceded for many years that the extent of the reputation of the earlier trade mark has to be taken into consideration in the assessment of likelihood of confusion. In the Sabel case, the CJEU indeed ruled that ‘the appreciation of the likelihood of confusion depends […] in particular, on the recognition of the trade mark on the market.’86 In the Lloyd case, the CJEU then ruled that, in making the assessment of the likelihood of confusion, the degree of distinctiveness of the earlier mark should be taken into consideration. Yet, to assess the distinctiveness, account should be taken, in particular, of […] the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations.87 In view of these statements, one readily observes that the scope of the protection that is granted to a mark by virtue of the EU regulations and EU Member States’ laws does not only result from the abstract trade mark registration but from real factors linked to the perception consumers acquire from the use that is made on the market. Some recent decisions tend to demonstrate that a method of comparison that takes into account the earlier mark as actually used, rather than as described in the registration, is increasingly favoured. In an important decision of 18 July 2013 the CJEU ruled that where a trade mark is not registered in colours but is widely used in a colour or a combination of colours, so that a large part of the public establishes a link between the mark and such a colour layout, those colours should be taken into consideration when assessing the likelihood of confusion with another mark. This results in the assessment of the likelihood of confusion on the basis of something that is unconcerned with the registration of the prior mark. In this particular case (Specsavers), the CJEU ruled that ‘ where there is a trade mark which is registered not in a particular colour or characteristic, but in black and white, the colour or combination of colours in which the trade mark is later used affects how the average consumer of the goods at issue perceives that trade mark, and it is, therefore, liable to increase the likelihood of confusion or association between the earlier trade mark and the sign alleged to infringe it.88 By way of contrast, in Australia a registered trade mark will be considered to cover all colours, whether the representations in the application are in black or white or a particular colour. However, in some situations it will be necessary to specify the colour (in effect to limit the registration to a particular colour) to escape objections based on similarity to other marks or particular exclusions and so on. What counts is the overall impression of the mark in the minds of consumers, and in some cases colour will be more significant than in others.89 In France, the Court of Appeal of Paris went even further and ruled that ‘the likelihood of confusion, that must be assessed globally in view of the overall impression produced by the marks at hand, implies that the invoked trade mark has been put to genuine use amongst consumers.’90 While it is true that, in a 2011 ruling, the French Supreme Court seemed to consider that likelihood of confusion has to be assessed in concreto, further to a comparison of the disputed mark with the prior mark as used,91 the CJEU recently stated on the contrary that the absence of genuine use of a trade mark in the market shall not be taken into consideration as relevant to the decision whether there exists a likelihood of confusion between this mark and another mark.92 At first glance, one would consider such finding to follow the principle according to which the protection of trade marks derives from the registration within the EU and is disconnected from the use of the mark on the market. It remains that the wording used by the CJEU in this decision reveals if not a complete change, at least an evolution of the paradigm. Thus, to the CJEU, the provisions of the EU Trade Mark Regulation according to which the rights of the proprietor of a registered mark cannot be revoked until the five-year period following registration has expired ‘confer on the proprietor a grace period for beginning genuine use of his mark, during which he may rely on the exclusive rights which the mark confers’ despite the absence of genuine use during this period.93 The terminology used by the court (ie the ‘grace period’), is remarkable since it means that the protection is granted to the mark subject to the existence of a genuine use at the end of the five-year period, while the usual approach in countries of protection through registration like France lies in the assertion that the mark enjoys a protection from the sole fact it is registered and can be revoked because of non-use in a five-year period. This change of terminology does not only reveal a change of approach from a pure theoretical standpoint but might also have a practical effect as to the consequences of a revocation decision further to a five-year non-use period. While such revocation normally takes effect from the expiration of the five-year period of non-use, considering such period as a ‘grace period’ could mean that a revocation decision has to take effect retroactively and might therefore deprive the mark of any protection from the very day its proprietor ceased using it. As far as the EU trade mark protection system is concerned, this issue shall be of interest over the next few years, in particular with respect to the provisions of EU Directive 2015/2436 that were adopted in December 2015. These provision link the scope of protection granted more tightly than before to the mark with its actual use in the market.94 In Australia the courts tend to stress that it is the mark as registered which should be comparted with the impugned mark, and not the mark as used by the trade mark owner. In fact, trade mark owners might fall foul of this requirement, by having an ill-described trade mark in the application, or by not following up changes in trade mark use with amendments of the register. This can be a significant issue as well in obtaining registration, as this may depend of the use of the mark as described in the application as a trade mark, rather than something different (eg when seeking to register a single mark it may be that the court holds that the particular colour was in fact always used in conjunction with another, the combination making up the relevant mark). Note however that, as mentioned above, unless a limitation to a particular colour is specified, a registration will be considered to cover all colours in Australia.95 In terms of the assessment to be made where there are some differences between the registered mark and the impugned mark, critical questions in Australian trade mark law are: what constituted the mark actually used by the respondent; and what surrounding factors can be taken into account? The assessment of trade mark infringement requires determination whether the two marks are deceptively similar; the overall impression of the two marks is the key reference point, and the practical question is whether the two marks so closely resemble each other as to cause confusion or deception. A typical consumer with a recollection of the registered mark, who comes across the impugned mark as used, would at least have to be confused as to a possible connection with the registered mark. The assessment is a narrower one than for passing off—not all the elements or circumstances of the alleged infringer’s conduct are relevant. In essence, trade mark law requires a comparison of the marks themselves; the question is what ‘relevant context’ can nonetheless be taken into account in construing this exercise. In relation to this, the court in the Adidas matter had the following to say: ‘In my opinion, the issue being one of fact, what the relevant context comprehends must vary with the marks in question, to what those marks are applied, and the circumstances in which the marks will be observed and compared.’ Price differences and the different character of purchasers were to be given little weight as ‘the evidence does not establish any clear differentiation between the two when making the required comparison of the marks’. Therefore ‘On the facts of the present case, I give greatest weight to the marks being used on shoes and to a purchaser of the respondent’s shoes seeing them in the setting of a store and being able to look at them in that setting.’96 However, the assessment in trade mark law is in another sense broader than in passing off. Whereas for the latter it must be established that consumers would come to an erroneous conclusion, in the former to establish confusion is sufficient, that is, that a number of persons are caused to wonder as to the origin of the goods; the ordinary consumer need not come to an ultimate conclusion that is in error. This also played out in the Adidas case, where for the shoes with stripes that were positioned in the equidistant and slanted manner of the Adidas mark, and against a contrasting background, the court held infringement of the trade mark was proven, even though the impugned marks had four rather than the registered three stripes. Since the stripes as they appeared on the various competing shoes were not identical to the registered trade mark, the question was whether the use of the stripes on Pacific Brands’ shoes would cause a real tangible danger of confusion.97 Justice Robertson found that although the average consumer would not forget that Adidas bore three stripes, it could not be assumed that they would perfectly remember the amount of stripes. The judge concluded that there was a ‘real, tangible danger of confusion occurring, beyond a mere possibility, and a number of persons will be caused to wonder whether it might not be the case that the two products come from the same source.’98 4.1.3. Impact of a ‘family of marks’ Further to this approach, the CJEU allows to take into consideration the fact that the public might associate a given sign with a ‘family of marks’, based on the observation that the use of some close adaptations of a mark might lead consumers to perceive these adaptations as being part of a same family. The General Court notably applied this rationale in a case where the McDonald’s company had filed an opposition against an application for registration of a MACCOFEE mark on the basis of various prior marks formed from the prefix ‘MC’. Yet, the ability of the owner of a family of marks to rely on this doctrine exactly depends on their ability to demonstrate that the marks are genuinely used in the marketplace and perceived by relevant consumers as such a ‘family’. To the General Court, the relevant public cannot be expected, in the absence of use of a sufficient number of trade marks capable of constituting a family, to detect common characteristics in such a family and to establish a link between that family and another trade mark containing elements that are similar to those characteristics. Therefore, for the relevant public to establish a link between a trade mark in respect of which a declaration of invalidity is sought and a ‘family’ of earlier trade marks, the earlier marks forming part of that family must be present on the market.99 The ability to rely on the ‘family of marks’ approach in order to combat imitation is particularly interesting in the fashion sector where a lot of counterfeiters use patterns or figurative signs that, if not creating confusion with a precise registered sign, produce the impression that this pattern or design is in line with a ‘type’ of pattern or design that a house or a creator has managed to establish as the indication of origin of its garments due to the genuine and intense use of this ‘family’ of patterns or designs before consumers. For example, the ‘multico’ designs used for years on Sonia Rykiel’s garments could be regarded as such a family of marks. This question was at the crux of a recent case in France concerning the ‘Puma Formstrip’ brand. While the Court of Appeal of Paris found that the use by a competitor of a variant of the famous Puma strip on trainers was not confusing with Puma’s marks, the French Supreme Court ruled that the assessment of the lower court was incorrect. To assess the existence of a likelihood of confusion, the Court of Appeal should not have compared the alleged infringing strip to the ‘Puma Formstrip’ as used on the market, in connection with other word and/or figurative elements on Puma shoes but should have focused on Puma’s prior mark as registered.100 However, in this case the reasoning followed by the Court of Appeal of Paris was also grounded in the observation that the Puma Formstrip belongs to a family of marks with which it was possible to be led into confusion by the impugned sign. Contrary to the recent decisions of the CJEU that tend to approve of this doctrine when about the matter concerns assessing the infringement of well-known marks, the Supreme Court stated that this was inappropriate in this particular case. Thus, when under EU trade mark law, likelihood of confusion should normally be assessed based on an abstract reasoning, the abovementioned decisions tend to show that case law is at a crossroads as regards to this very question. As far as non-traditional trade marks are concerned, this is of concern, since slight variations do often exist between the mark as registered and the way it is actually used on the market. Assessing the likelihood of confusion with such marks, not in view of their registration, but in view of the way they are actually used and perceived by consumers on the market might favorably increase their protection. The weakness of these marks lies in the fact that they might be perceived as mere decorations rather than as real badges of origins. In the Australian context the matter is assessed as one of deceptive similarity, which is defined as follows in section 10 TMA: ‘For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.’ The assessment has to be made on the basis of the mark as registered, and its post-registration use or the fact that there are other registered marks with a common element, is in theory of no relevance. 4.2. Use ‘as a trade mark’ of a decorative feature The more significant question as to the protection of the non-traditional trade marks used in the fashion industry is whether adopting an identical or similar sign to a mark as a decorative feature for a competing garment amounts to trade mark use—or in the Australian jurisdiction—‘use of the mark as a mark’.101 4.2.1. Requirement of use as a trade mark Should the infringement be subject to the existence of a likelihood of confusion or not, once the design is registered as a trade mark, there is infringement only if the consumer perceives the design or shape as an indication of origin and not only as a decoration. Where the mark is more famous (eg the Burberry check), the sign will be more likely to be considered an indication of origin. But in a great number of cases—and even when the prior mark is renowned—defendants are tempted to submit that a non-traditional mark (a pattern, a position mark, etc) is not used and perceived as a mark but as a mere element of decoration of the garment. First, the fact that a pattern, a design, a colour, may be decorative does not preclude it from playing the role of a badge of the origin for the garment or item on which it is affixed. While such element might be decorative, it can also serve as a badge of origin. The two are not mutually exclusive in both Australian and EU laws.102 In other words, it is only if the figurative element is perceived exclusively as a decoration that its use shall be considered as legitimate and not trade mark use. Such precision is decisive in regard of the fact that today in fashion, trade marks are more often used in a decorative or attractive manner, either by using existing traditional marks to decorate garments (such as the Hilfiger example) or by using consistent and typical decorative elements as indicators of origin (the Hermès orange, for instance). Although not strictly related to a fashion garment since it concerned shoes, some decisions concerning the Adidas triple-stripe mark can illustrate this principle. There have been relevant decisions in Australia,103 as well as in Europe. In Australia, Adidas brought proceedings for trade mark infringement against Pacific Brands, which was producing shoes with four stripes. The defendant argued that use of four stripes on the side of shoes was not use as a trade mark, and that the stripes were not deceptively similar to the Adidas trade mark. To Pacific Brands, the stripes were a purely decorative element and the products at hand did not share the same nature and distribution channels.104 As a result, and given the widespread use of stripes on sports shoes on the market, Pacific Brands claimed that the use of four stripes was not use as a trade mark. On the contrary, Adidas emphasized that the location of the stripes (the side of the shoes), was the usual location of a badge of origin (as examples the uses of the Nike swoosh or the New Balance ‘N’ that usually appear on similar positions). Some expert evidence to that effect assisted the Federal Court of Australia in coming to the conclusion that consumers were accustomed to seeing a brand between the laces and the sole of the shoe, and since that was where the imitative four stripes appeared, they would be seen as performing a trade mark rather than a purely decorative function. In Europe, two important Adidas cases provided the CJEU with the opportunity to state that the fact the public views a sign as an embellishment is not in itself an obstacle to the protection conferred to trade marks by the national legislations of the EU Member States.105 It was first addressed in a case where Adidas’ claims were grounded on the provisions that grant protection to well-known marks.106 For these marks, the protection is not conditional upon the existence of a likelihood of confusion in relation to the origin of the products but to establishing that the relevant public is likely to make a ‘link’ or connection between the sign and the renowned mark.107 The solution was then extended to situations where the protection is granted subject to the existence of a likelihood of confusion. The court notably stated that the public’s perception that a sign is a decoration cannot constitute a restriction on the protection conferred by Article 5(1)(b) of the Directive when, despite its decorative nature, that sign is so similar to the registered trade mark that the relevant public is likely to perceive that the goods come from the same undertaking or, as the case may be, from economically linked undertakings.108 By contrast, this means that, if the public views the sign purely as an embellishment of the product, and absent any ‘use as a mark’, no protection shall be awarded to the prior mark. An analogy exists between Australian and EU laws as to the manner the courts assess the perception of the mark and the existence of a ‘use as a mark’. Both Australian and French courts tend to assess the situation globally and to decide whether the sign at hand is perceived as a mark or not depending on the convergence of various indicators. 4.2.2. Method of assessment French courts have particular regard for the extent of the reputation of the prior mark and the degree of similarity between the marks. For example, in a case that concerned the Agatha Scottish Terrier figurative mark, the French Supreme Court stated that, despite the public’s perception of the impugned sign as a decoration, that sign was so similar to Agatha’s registered trade mark that the relevant public is likely to perceive it as an indication that the goods come from the same undertaking or from economically linked undertakings. In its decision, the Supreme Court emphasized that the public would inevitably make the connection between the marks due to the Agatha trade mark’s strong reputation and the great similarity between the drawings.109 Another example of this method of assessment can be found in two decisions issued the same day by the Civil Court of Paris. In the first case, the court considered that the use of the drawing of a head of tiger on the face of a sweater did not infringe the rights in a prior figurative mark covering a head of a tiger and registered for garments. The rationale was that the public would not interpret such features as an indication of origin of the sweater, notably due to the dissimilarities existing between the mark and the sign, and as a consequence of the practices of the sector.110 However, it seems that the implicit rationale was the fact that the prior mark did not enjoy a particularly extensive reputation. On the very same day, the same chamber of the Civil Court of Paris indeed found that the use, on the face of a T-shirt, of a sign similar to a figurative mark registered by Louis Vuitton was trade mark use. In this decision, contrary to what they had stated in the other judgment, the court found that consumers are accustomed to perceiving decorative features on the face of T-shirts as potential ’badges of origin’. The distinguishing factor lay in the fact that the mark at hand enjoyed greater notoriety than the one that was invoked in the case concerning the tiger.111 One would conclude that the higher the reputation a fashion non-traditional mark enjoys, the better will be its protection against unauthorized use. In Australian decisions the extent of the reputation of the registered mark is considered a relevant factor. As the Federal Court of Australia said in Adidas: ‘[…], the strength or “fame” of a trade mark must be taken into account in assessing the imperfect recollection of the registered trade mark which was relevant in the deceptive similarity test.’112 Courts might also rely on other factors when assessing whether a sign is used as a mark and infringes a prior mark. They shall for example take into consideration the place where the sign is affixed in order to determine whether it is used as a mark or not. In a rather unusual case, the owner of a trade mark ‘Mister Fitness’ registered for garments was complaining about the use of this expression on aprons with the body of a muscled man wearing underwear on which these words were reproduced. In this case, the Civil Court of Paris thus ruled that the denomination is affixed to the waistband of the underwear worn by the body reproduced on the apron, while it is customary for a sign used as a mark to be inscribed on the undergarment belt. Consequently, the contested sign was used, not merely for decorative purposes, but under conditions such that, in the eyes of consumers, that use was made as a trade mark.113 Another indicator the French courts tend to take into consideration to assess whether the impugned sign is likely to be perceived as a mark or not is linked to the potential use of a house brand on the product. French case law is rather inconsistent as to the relevance of this criterion. In a case where the mark ‘100% Fille’ (100% Girl) was registered for shoes, the Civil Court of Paris ruled that the use of this expression on the face of a similar product (a T-shirt) was non-infringing. The reason was that ‘the name depicted on the label of the tee-shirt is the house brand Influx’.114 As far as trade marks in the fashion sector are concerned, some decisions even state that the only sign that plays the role of a badge of origin on a garment is the label, while any other pattern, design or expression could not play such role.115 Fortunately, such approach does not reflect the dominant position in French case law. Some other decisions indeed state that ‘two marks can coexist on a same product and do not annihilate each other nor have them to be considered globally’,116 and acknowledge that ‘the actors of this sector usually affix their marks on the face of their tee-shirts in order to allow the consumer to identify their commercial origin’ to rule, as a consequence, that the mere coexistence of two different signs on the label and somewhere else on a garment does not lead per se to the finding that the second is exclusively decorative.117 In Australian cases as well, it is common to ask whether a feature may appear less like a trade mark, because another sign present is so manifestly performing that function. This is relevant in terms of acquired distinctiveness but also in infringement. A lot will depend on the particular positioning and rendition of the mark, and whether it is normal to have head-brands and sub-brands present on goods. Sometimes a word mark may appear like an exhortation or statement rather than a brand. In Top Heavy the use of the trade mark CHILL OUT, registered for clothing, on the respondents’ T-shirts, where the terms were rendered in a manner where a Coca-Cola bottle made up the ‘’', was not infringing.118 The court held that ‘in general terms the message is … an exhortation to the reader … to relax’, rather than one relating to the trade origin of the T-shirts. Still, the distinctiveness resulting from trade mark use tends to limit the level of protection that is granted to non-traditional marks in the fashion sector. For these specific signs, in France unfair competition sometimes offers a tortious basis for a remedy, notably when the decorative nature of the sign undermines the case for trade mark infringement. In Australia only passing off or an action under s 18 of the Australian Consumer Law for misleading or deceptive conduct is available. Both require proof of consumer deception, and there is no recognized broader tort of unfair competition. Since all the circumstances (and not just the immediate confines of the marks) can be taken into account in passing off, the resulting broader inquiry may result in liability where a registered trade mark case would not (eg if other features are also similar or where there is slavish design imitation). However, proof of mere confusion is not sufficient—consumer deception must be established. 5. Conclusion In Europe, in particular in France, litigation on the basis of non-traditional marks is far more common than in Australia, although, in fact registrations between both Australia and Europe seem to carry similar numbers. In both jurisdictions, a trade mark can perform both a badge of origin and a decorative function. Although the law in Europe appears to be more restrictive because of the express exclusions, in practice there does not appear to be much difference between the two jurisdictions. The question asked in the context of distinctiveness in Australia is whether other traders acting with proper motives wish to adopt the same or a substantially identical or deceptively similar shape for their goods. The effect of asking this question is analogous to the application of the a priori exclusions mean in Europe. That in both jurisdictions advocates face the hurdle of having to establish the registered trade mark has been used as a mark, which is not always so straight forward in circumstances where that mark has decorative or functional aspects. Quite often, the sign used by the respondent is not identical to the registered mark and therefore the question of deceptive similarity arises and difficult questions concerning the extent of contextual information that can be taken into account plague the courts. Footnotes 1 See V. Atkinson, V. Azard, M. Malaurie-Vignal and W. van Caenegem. ‘Comparative Study of Fashion and IP: Copyright and Designs in France, Europe and Australia’ (2016) Journal of Intellectual Property Law & Practice, 11: 516–532. 2 World Trade Organization, ‘Agreement on Trade-Related Aspects of Intellectual Property Rights’, available at https://www.wto.org/english/tratop_e/trips_e/t_agm0_e.htm. 3 Burberry Limited Trade mark No. 000377580 (Europe) and No. 708955 (Australia). 4 Tommy Hilfiger ‘H’ Trade mark No. 002952596 (Europe) No. 975838 (Australia). 5 Louis Vuitton Paris Trade mark No. 3675908 (France), No 9844127 (EU trade mark) and No. 1351113 (Australia). 6 Burberry Limited Trade mark No. 000377580 (Europe) and No. 708955 (Australia). 7 Christian Louboutin Trade mark No. 3869370 (France) and No. 008845539 (Filed in Europe) and No. 1352410 (Australia). 8 The Culture Trip, ‘How France Became the Fashion Capital of the World’, available at http://theculturetrip.com/europe/france/articles/how-france-became-the-fashion-capital-of-the-world/. 9 For example, the brands Billabong and Ripcurl have seen international success. 10 See http://www.abc.net.au/news/2016-08-08/online-pirates-ripping-off-australian-designs-from-instagram/7586664. 11 The legal status of unregistered (or common law) marks will be dealt with in an upcoming article related to passing off and unfair competition. 12 It should be also noted that both in Europe and Australia there are a number of other grounds of refusal or invalidation of trade marks, for instance marks that are misleading or deceptive and marks that are too close to existing registered, or unregistered, marks. These grounds are not considered in this article. 13 The EU institutions have adopted the ‘trade mark reform package’ in December 2015. Regulation EU N°2015/2424, modifying the Regulation N°207/2009, sets out rules applicable to EU trade marks. Most of its provisions came into force on 23 March 2016 and a few will enter into force only on 1 October 2017. Directive EU 2015/2436 further harmonizes the national trade mark systems of the EU Member States. It came into effect on 13 January 2016 but requires implementation by Member States into their own national laws. In this regard, the vast majority of changes needs to be implemented by 14 January 2019 at the latest but the provisions relating to the administrative invalidity/revocation proceedings need to be implemented by 14 January 2023. It is the most significant reform since the introduction of the Community trade mark system in 1988. 14 Although such exclusions were included in the Trade Marks Act 1994 (Cth) which never came into operation because it was hurriedly passed to meet TRIPS implementation deadlines. Effectively the 1995 Act directly supplanted the 1955 Act in operational terms. 15 Articles 3(1) of the Directive No. 2008/95/EC and 4(1) of the new Trade mark Directive 2015/2436. 16 Articles 7(1) of the Regulation No 207/2009/EC and of the new Trade mark Regulation 2015/95. 17 CJEU, 18 september 2014, ECLI:EU:C:2014:2233. Hauck GmbH & Co. KG c/ Stokke A/S et a, §39. 18 Ibid, § 23: ‘an interpretation of the first indent of that provision whereby that indent is to apply only to signs which consist exclusively of shapes which are indispensable to the function of the goods in question, leaving the producer of those goods no leeway to make a personal essential contribution, would not allow the objective of the ground for refusal set out therein to be fully realized.’ 19 In Mayne Industries Pty Ltd v Advanced Engineering Group Pty Ltd [2008] FCA 27 the registration for a sign in the shape of a ‘fence dropper’ was cancelled. 20 Cass. com., 30 May 2012, n°11-20724, SA Louboutin SARL c/ Zara France. 21 Ibid, ‘the shape appeared to be imposed by its nature or its function’. 22 French trade mark N° 11 3 860 024. 23 Paris District Court, 3e ch., 2e sect., 10 April 2015, N 13/11016. 24 CJEU 10 November 2016 Simba. 25 Trib. EU, 6 oct. 2011, aff. ECLI:EU:T:2011:575, Bang & Olufsen, Hauck GmbH & Co KG v Stokke A/S and others, Case ECLI:EU:C:2014:2233, EU:C:2014:2233, CJEU, 18 September 2014. 26 CJEU 20 September 2007, ECLI:EU:C:2007:542, Benetton Group SpA v G-Star International BV. 27 More specifically, the distinctive elements were listed as followed ‘sloping stitching from hip height to the crotch seam, kneepads, yoke on the seat of the trousers, horizontal stitching at knee height at the rear, band of a contrasting colour or of another material at the bottom of the trousers at the rear, all on one garment; seams, stitching and cuts on the kneepad of the trousers, slightly baggy kneepad.’ 28 As would be the case with any other kind of mark that could also have visual appeal, such as the three-stripe Adidas mark: see Adidas AG v Pacific Brands Footwear Pty Ltd (No 3) [2013] FCA 905. 29 Tribunal de Grande Instance (Paris District Court) 31 March 2016, N°15/03632. 30 Max-Planck Institute, 15 February 2011, available at ec.europa.eu/internal_market/indprop/docs/tm/20110308_allensbach-study_en.pdf, 72–4. 31 Mars Australia Pty Ltd (formerly Effem Foods Pty Ltd) v Société des Produits Nestlé SA [2010] FCA 639 (22 June 2010). 32 Trade mark No. 1365687 (Australia). 33 CJEU Case ECLI:EU:C:2004:88 Henkel v OHMI (bottle of detergent) § 52. 34 CJEU, ibid § 49. 35 GCEU, Bottega Veneta International Sarl v OHIM, 22 March 2013, ECLI:EU:T:2013:148. 36 CJEU, Louis Vuitton,15 May 2014, ECLI:EU:C:2014:324. ‘The line of authority that evolved in relation to three-dimensional trade marks consisting of the appearance of the product itself also applies where the trade mark applied for is a figurative mark consisting of the two-dimensional representation of that product. In such cases, the mark likewise does not consist of a sign independent of the appearance of the products it designates’ (§ 53). 37 TPIUE Louis Vuitton 21 April 2015, ECLI:EU:T:2015:215 and ECLI:EU:T:2015:214 § 23. 38 CJEU 15 May 2014, ECLI:EU:C:2014:324: has concluded of the lack of distinctiveness of the locking device for ‘spectacle cases’ in Class 9, the ‘jewel boxes in precious metals, their alloys or coated therewith’ in Class 14, or the ‘travel bags, travelling sets (leather goods), trunks and travelling bags, garment bags for travel, vanity cases, rucksacks, shoulder bags, handbags, attaché cases, document cases and briefcases of leather, pouches, wallets, purses, key cases, card cases’ in Class 18, and by contrast of the distinctiveness of the same locking device for ‘jewellery, including rings, keyrings, buckles and earrings, cuff links, bracelets, trinkets, brooches, necklaces, [tie] pins, ornaments, medallions; horological and chronometric instruments and apparatus, including watches, watchcases, alarm clocks’ in Class 14 and the ‘umbrellas’ in Class 18. 39 Cass Com [French Supreme Court] 6 January 2015 N°13-17108. The French Supreme Court held that the ‘I ♡ PARIS’ and ‘J’♡ PARIS’ do not allow distinguishing the origin of the covered souvenir products: the semantic content of this trade mark is viewed as a message of affection for a particular city. According to the Court, this lack of identification will lead a consumer to view the trade marks “I ♥ PARIS” and “J ♥ PARIS” as decorative signs and not as trade marks produced and marketed by the France Trading company. This case is considered as the first autonomous reference to the distinctive standard in French jurisprudence. 40 CJEU Voss of Norway supported by INTA, 7 May 2015, ECLI:EU:C:2015:303. 41 CJEU 15 May 2014, ECLI:EU:C:2014:324 the locking devices used on goods such as trunks, travelling bags, garment bags for travel, handbags etc, may take different forms but very frequently consist of two parts which lock into each other in various ways and of a device, such as a button or lever, to activate the unlocking mechanism. So far as the mark applied for has those characteristics. Therefore this mark consists of the typical image of a locking device for the abovementioned goods and is, therefore, devoid of any distinctive character as regards those goods. 42 CA Paris, 20 May 2011, n°10/10756. 43 GCEU, Bottega Veneta International Sarl v OHIM, 22 March 2013, ECLI:EU:T:2013:148. 44 CA Paris 27 January 2015 n°13/047001. 45 GCEU, Nestlé,15 December 2016, ECLI:EU:T:2016:735. 46 CJEU 24 May 2012 ECLI:EU:C:2012:307. 47 CA Paris 31 March 2015 n°13/23127. 48 Article 4(4) of the Directive 2015/2436. 49 CJUE, Levi Strauss, 18 April 2013, ECLI:EU:C:2013:253. 50 CJEU 20 September 2007, ECLI:EU:C:2007:415, Benetton Group SpA v. G-Star International BV. 51 For a decision where consistent application of a single color was not considered to have amounted to trade mark use of that colour, see Woolworths Limited v BP plc (No 2) [2006] FCAFC 132; see further below. 52 See Adidas AG v Pacific Brands Footwear Pty Ltd (No 3) [2013] FCA 905. Expert evidence indicated that consumers expected to see brands on shoes in the position between the laces and sole; thus the positioning of the Adidas three stripes was, by implication, trade mark use of that device. 53 Trib. UE, 19 sept. 2012, ECLI:EU:T:2012:440, V. Fraas GmbH v OHMI, § 74 et 75. 54 Paris Court of Appeal 14 December 2012 n°12/05245. 55 CGEU, 21 April 2015, ECLI:EU:T:2015:215, ECLI:EU:T:2015:214, Louis Vuitton Malletier v OHIM. 56 Specialty Fashion Group Limited v Alpargatas S.A. [2015] ATMO 100. 57 CJEU, Order of 11 September 2014, ECLI:EU:C:2014:2222. 58 GCEU 15 June 2010, ECLI:EU:T:2010:235. 59 GCEU 4 December 2015, ECLI:EU:T:2015:937. 60 CGEU, 15 December 2015 ECLI:EU:T:2015:937, ECLI:EU:T:2015:973. 61 GCEU 14 March 2014, ECLI:EU:T:2014:129. 62 CJUE, Levi Strauss, 18 April 2013, ECLI:EU:C:2013:253. 63 http://www.vogue.co.uk/article/remembering-richard-nicoll-with-dedicated-pantone-colour. 64 CJEU, 6 May 2003, ECLI:EU:C:2003:244. 65 Cass. com., 30 May 2012, n° 11-20724, SA Louboutin SARL v Zara France. 66 GCEU, 16 July 2015, ECLI:EU:T:2015:521: Louboutin won against an opposition to the registration of its EC red colour trade mark made by a company which previously registered a blue and red coloured trade mark on the sole of a shoe. 67 GCEU, 11 July 2013, ECLI:EU:T:2013:376, Think Schuhwerk. 68 Levi’s red rectangular label at the left upper edge of a pocket of trousers, shorts or skirts in CJUE, 18 April 2013, ECLI:EU:C:2013:253, Levi Strauss. 69 Trade markify, Australian Trade mark No. 1352410, see http://www.trade markify.com.au/trade mark/1352410?i=-Christian_LOUBOUTIN_1_rue_Volney_F_75002_PARIS_FRANCE#.VAkEdFzfJuY (accessed 10 August 2016). 70 C. Logan, ‘Louboutin Sees Rouge: Can other Traders Colour the Soles of Their Shoes Red?’ (2011) 24(3) Australian Intellectual Property Law Bulletin 75–6. 71 S 33(1): The Registrar must, after the examination, accept the application unless he or she is satisfied that […] (b) there are grounds under this Act for rejecting it. 72 Kenman Kandy Australia Pty Ltd v Registrar of Trade marks [2002] FCAFC 273. 73 In Adidas, a significant question was whether the diagonal striping features on the imitation shoes would be perceived as having a functional role (eg reinforcing the shoe, attached the straps, or improving playability): Adidas AG v Pacific Brands Footwear Pty Ltd (No 3) [2013] FCA 905 74 See Philmac Pty Limited v The Registrar of Trade marks [2002] FCA 1551. 75 Re BP PLC (2014) 107 IPR 637. 76 Re BP PLC (2014) 107 IPR 637 at 646. 77 Re BP PLC (2014) 107 IPR 637 at 647. 78 Cadbury UK Limited Trade mark No. 1120614 (Australia). 79 Koninklijke Philips Electronics NV v Remington Products Australia Pty Limited [2000] FCA 876. 80 CJEU 20 September 2007, ECLI:EU:C:2007:542, Benetton Group SpA v G-Star International BV. 81 Section 120 Trade Mark Act 1995 (Cth). 82 Directive 2008/95 [EC], Art. 5.1(a): ‘The registered trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade: (a) any sign which is identical with the trade mark in relation to goods or services which are identical with those for which the trade mark is registered.’ The same applies to EUTMs: Regulation 207/2009 [EC] of 26 February 2009, art. 9.1(a). The definition of the trade mark infringement remain the same in the new Directive [EU] 2015/2436 of 16 December 2015 which provisions have to be implemented in the legislation of the EU State members by 14 January 2019: art. 10.2(a). 83 Directive 2008/95 [EC], Art. 5.1(b): ‘The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade: (b) any sign where, because of its identity with, or similarity to, the trade mark and the identity or similarity of the goods or services covered by the trade mark and the sign, there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trade mark.’ The same applies to EUTMs: Regulation 207/2009 [EC] of 26 February 2009, art. 9.1(b). See also art. 10.2(b) of the new Directive [EU] 2015/2436 of 16 December 2015. 84 CJEU, 11 November 1997, ECLI:EU:C:1997:528, Sabel, para. 22. 85 GCEU, 20 April 2005, Faber, ECLI:EU:T:2005:135, para. 37. 86 CJEU, 11 November 1997, Sabel, ECLI:EU:C:1997:528, para. 22: ‘the appreciation of the likelihood of confusion “depends on numerous elements and, in particular, on the recognition of the trade mark on the market, of the association which can be made with the used or registered sign, of the degree of similarity between the trade mark and the sign and between the goods or services identified”. The likelihood of confusion must therefore be appreciated globally, taking into account all factors relevant to the circumstances of the case.’ French case law is in line with such definition of the ‘likelihood of confusion’: see Cass. com., 27 January 2009, no. 07-18-264. 87 CJEU, 22 June 1999, Lloyd, ECLI:EU:C:1999:323, para. 23. 88 CJEU, 18 July 2013, Specsavers, ECLI:EU:C:2013:497, paras 37–8. 89 ‘Should I Register My Trade Mark in Colour or Black and White?’, available at https://legalvision.com.au/should-i-register-my-trade-mark-in-colour/ (by Sophie Glover, 4 July 2017). 90 CA Paris, Pôle 5-1, 13 September 2016: RG 15/04749, Buob. 91 Cass. com., 8 February 2011, no. 09-13610: ‘Finding that Mr. X who did not contest that the mark “Kezako au moins c’est? pas du hasard” had not be exploited, was not demonstrating the existence of a likelihood of confusion in the consumer’s mind, the Court of appeal did not only noticed the absence of reputation of the mark “Kezako” legally motivated the decision.’ 92 ECLI:EU:C:2016:998, 21 December 2016, Länsförsäkringar: ‘Article 9(1)(b) of Council Regulation (EC) No 207/2009 of 26 February 2009 (…) must be interpreted as meaning that, during the period of five years following registration of an EU trade mark, its proprietor may, if there is a likelihood of confusion, prevent third parties from using in the course of trade a sign identical or similar to his mark in respect of all goods and services identical or similar to those for which that mark has been registered without having to demonstrate genuine use of that mark in respect of those goods or services.’ 93 ECLI:EU:C:2016:998, 21 December 2016, Länsförsäkringar, para. 26. 94 See recitals 30 to 32 of the Directive (EU) 2015/2436 of the 16 December 2015, in particular the recital 32: ‘a registered trade mark should only be protected in so far as it is actually used and a registered earlier trade mark should not enable its proprietor to oppose or invalidate a later trade mark if that proprietor has not put his trade mark to genuine use.’ 95 See above n 91. 96 At FCA [214]-[220]. 97 Further to Australian Law, the presence of intention to cause confusion assists in determining the risk of confusion: Australian Woollen Mills Ltd v FS Walton and Co Ltd [1937] HCA 51; (1937) 58 CLR 641 at 657–8: ‘The rule that if a mark or get-up for goods is adopted for the purpose of appropriating part of the trade or reputation of a rival, it should be presumed to be fitted for the purpose and therefore likely to deceive or confuse, no doubt, is as just in principle as it is wholesome in tendency’, Wingate Marketing Pty Ltd v Levi Strauss & Co [1994] FCA 1001; (1994) 49 FCR 89 at 129; Sydneywide Distributors Pty Ltd v Red Bull Australia Pty Ltd [2002] FCAFC 157; (2002) 55 IPR 354 at [45] and [117]–[121]; Campomar Sociedad, Limitada v Nike International Ltd [2000] HCA 12; (2000) 202 CLR 45 at [33]. 98 Based on an examination of the way the stripes were spaced on positioned on each alleged pair of shoes, it was found that some of them were not infringing Adidas trade mark, whether the stripes were not perfectly parallel, whether they were very close together. 99 GCEU, 5 July 2016, ECLI:EU:T:2016:389, Future Enterprise, para. 44. 100 Cass. com., 18 October 2016, no. 15-14523. 101 Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 (26 July 1963) and Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd [1999] FCA 816 (18 June 1999). 102 In Australia this was expressly confirmed in the Adidas case. 103 Adidas AG v Pacific Brands Footwear Pty Ltd (No 3) [2013] FCA 905 URL http://www.austlii.edu.au/cgi-bin/sinodisp/au/cases/cth/FCA/2013/905.html?stem=0&synonyms=0&query=title(adidas%20and%20pacific%20brands%20 (accessed 8 August 2016). 104 Pacific Brands highlighted the fact that Adidas shoes are for performance whereas Pacific Brands shoes were not for performance and were sold in lower cost stores with no customer service assistance. 105 Such solution of course also applies to the EU trade marks. 106 CJEU, 23 October 2003, ECLI:EU:C:2003:582, Adidas I. 107 Directive 2008/95 (EC), art. 5(2): ‘Any Member State may also provide that the proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade any sign which is identical with, or similar to, the trade mark in relation to goods or services which are not similar to those for which the trade mark is registered, where the latter has a reputation in the Member State and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.’ 108 CJEU, 10 April 2008, ECLI:EU:C:2008:217, Adidas II, para. 34. 109 Cass. com., 12 June 2012, no. 11-20132. 110 TGI Paris, 3rd ch., 1st sect., 14 April 2016: PIBD 2016, n°1052, III, p. 509: ‘The size of the head of tiger and its position on the sweater lead the public to perceive this sign, with respect to the practices of the sector, exclusively as a decoration and not as a guarantee of the commercial origin.’ 111 TGI Paris, 3rd ch., 1st sect., 14 April 2016: PIBD 2016, n°1051, III, p. 462: ‘The disputed sign shall therefore be perceived as being able to provide a guarantee of origin. It is indifferent that the sign simultaneously plays a decorative role. Indeed, the various actors of the sector usually affix their brands on the face of the tee-shirts to allow consumers identifying their commercial origin. Yet, the identity of the products and the great similarity of the signs generate a risk of confusion in the consumer’s mind.’ 112 Adidas AG v Pacific Brands Footwear Pty Ltd (No 3) [2013] FCA 905 at [86]. 113 TGI Paris, 16 December 2009: PIBD 2010, n°914, III, p. 184. 114 TGI Paris, 3 November 2009: PIBD 2010, n°912, III, p. 121. On the contrary, if the terms depicted on the face of the T-shirt are simultaneously reproduced on the labels of the garment, these terms are indisputably used as a trade mark: TGI Paris, 19 March 2009, Miss Pop. 115 See CA Douai, 17 March 2016: PIBD 2016, n°1048, III, p. 330; CA Paris, 28 November 2012: PIBD 2013, n°975, III, p. 865. 116 TGI Paris, 4 July 2014: PIBD 2014, n°1015, III, p. 817. 117 TGI Paris, 14 April 2016: PIBD 2016, n°1051, III, p. 462. 118 Top Heavy v Killin (1996) 34 IPR 382; the court noted that It was noted earlier in the decision that ‘questions of this sort arise where a word or phrase, claimed to be used as a trade mark, is capable of being read as descriptive of a characteristic, quality or function of the goods in relation to which it was used.’ © The Author(s) 2018. Published by Oxford University Press. All rights reserved. http://www.deepdyve.com/assets/images/DeepDyve-Logo-lg.png Journal of Intellectual Property Law & Practice Oxford University Press

A comparative study of fashion and IP: trade marks in Europe and Australia

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Oxford University Press
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© The Author(s) 2018. Published by Oxford University Press. All rights reserved.
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1747-1532
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Abstract

Abstract The authors Violet Atkinson is a lawyer at Cronin Litigation and also at Bond University, Gold Coast, Australia; Viviane Azard is an attorney-at-law at Bardehle Pagenberg, Paris; Julien Canlorbe is attorney-at-law, Partner at Meridian Avocats, also in Paris; and William van Caenegem is at Bond University, Gold Coast, Australia. This article Design registration and copyright are the central mechanisms for IP protection of the appearance of fashion garments, and trade mark law may seem of little relevance at first glance. However, since the adoption of the World Trade Organization’s TRIPS standards for registered trade mark protection, the dividing line between product and trade mark has become much less pronounced. In particular, the shape of goods and colours as such are eligible for trade mark registration. Other decorative features, such as patterns (the Burberry check for instance) or stitching, and other non-traditional trade marks may also be registered under certain conditions. This presents interesting opportunities to fashion labels, which can obtain perpetual protection for some of their most striking or memorable visual features through trade mark registration. This article compares the state of the law on this topic in Australia and France, contrasting jurisdictions in terms of the underlying legal systems but also in terms of the relative importance of the fashion industry. Although the formal requirements and tests of the law in the two countries seem quite different, very similar results are obtained in many respects. In both countries there are serious obstacles to registration, and once a non-traditional mark is registered it is not easy to obtain a remedy against a competitor who adopts a similar feature. The concept of use of a mark as a mark, both for the sake of registration on the basis of acquired distinctiveness, and in enforcement, concerns judges in both jurisdictions. Infringing use is also problematical. 1. Introduction: from badge of origin to style feature Design registration and copyright are the central mechanisms for IP protection of the appearance of fashion garments, and trade mark law may seem of little relevance at first glance.1 However, since the adoption of the World Trade Organization’s TRIPS standards for registered trade mark protection,2 the dividing line between product and trade mark has become much less pronounced. In particular, the shape of goods and colours as such are eligible for trade mark registration. Other decorative features, such as patterns (the Burberry check for instance)3 or stitching, and other non-traditional trade marks may also be registered under certain conditions. What amounts to a ‘sign’ that can be registered as a trade mark is no longer defined by reference to a limited and exhaustive statutory list. For fashion houses this development holds the promise of obtaining exclusive rights over some of the most critical visual features of their garments. Unlike copyright and especially design registration, trade mark registration can be indefinitely renewed. Fashion houses are aware of the potential of trade marks to monopolize inherent aspects of their products, and they take a proactive approach to register various non-traditional marks with a view to profit maximization. They have developed diverse strategies: signs might be used in a more emphatic decorative fashion by varying their normal placement or size (for example the Adidas three stripes or the Tommy Hilfiger ‘H’),4 or by multiplying references to them on garments, as decorative patterns (the Louis Vuitton pattern for instance).5 Alternatively traditional decorative elements might be used in a branding manner to improve the chances of obtaining trade mark protection (eg the Burberry check).6 Colours as such are also accepted as potentially registrable trade marks, which presents opportunities for fashion businesses, particularly if they are closely associated by consumers with a specific colour (for instance, the Louboutin red sole).7 However, in practice, there are serious hurdles to overcome both in terms of registration and enforcement of such non-traditional marks. These issues are considered in further detail below in relation to Australian and EU law, with a focus on the situation in France. France is historically the epicentre of fashion and, despite growing competition, remains a leading country in the fashion industry.8 Despite the ambition to harmonize EU IP law, there remain considerable differences between the various EU Member States. By contrast, Australia is a newly emerging force in fashion design and brand development, although it has a traditional strength in swimwear and surf wear sectors.9 Australian fashion designers are very concerned with the IP protection of their garments and often point to perceived deficiencies in the copyright/design system.10 These perceived deficiencies make the trade mark alternative all the more attractive. The two jurisdictions present relevant contrasts regarding our core issue: how easy it is to obtain trade mark registration for decorative aspects of garment fashion, and how effective such registration can be against imitators.11 2. General requirements for trade mark registration This section is concerned with the most relevant absolute grounds of refusal in relation to trade marks.12 In Europe, trade marks can be registered at a national or EU level. The Trade Mark package 201513 permits the registration of a broader range of signs (eg, smells, tastes and textures) by having removed the graphic representation requirement (Article 4 of the EU Regulation and Article 3 of the EU Directive). Protecting textures by trade mark registration may be of particular interest to fashion houses. However, to be registrable, the representation of texture signs must be clear, precise, self-contained, easily accessible, intelligible, durable and objective. In Australia, the Trade Marks Act 1995 (Cth) (TMA) permits any ‘sign’ to be registered as a trade mark. The Act provides a non-exhaustive list of such signs (including shape of goods and packaging). But anything that performs the functions of a sign could be registered; that of course requires a capacity to distinguish (see further below), but it is also a requirement that the mark can be graphically represented (s. 40 TMA). In terms of fashion in the broadest sense, this might present challenges for scent marks in particular, but also for texture marks. However, it is also significant that the exclusive rights of the trade mark owner are confined to the representations in the application. Therefore an applicant will have to consider carefully how to categorize and represent a mark: this issue has arisen in the context of the Louboutin shoe marks around the world, for instance. Both in Europe and Australia, a trade mark, whether traditional or non-traditional, must be distinctive in order to be registered. This means that a trade mark must be capable of distinguishing the goods and services of an applicant from those of a competitor. Additionally EU regulations have specific express exclusions, which prohibit the registration of certain signs. These exclusions as well as the distinctiveness requirement are warranted by the need to balance protection of the trade mark owner’s goodwill and legitimate availability of generic signs to competitors. 2.1. Express exclusions In Australia every mark, whether traditional or non-traditional, is dealt with in the same manner when it comes to distinctiveness. There are no a priori exclusions, because it was considered that such express exclusions as for instance exist in Europe are in substance mere cases of lack of distinctiveness.14 By contrast, EU law (both the Directive15 and the Trade Mark Regulation)16 provides for express exclusion of certain types of signs. Excluded are signs that consist exclusively of the shape of goods and result from their nature; the shape of goods which is necessary to obtain a technical result; and of a shape which gives substantial value to the goods. The exclusions thus apply to shapes that are exclusively natural, functional or ornamental. In effect there is a non-rebuttable presumption that such trade marks are not capable of distinguishing goods. The exclusions are absolute rather than relative and must be applied independently.17 We deal with these exclusions before considering the broader requirement of distinctiveness and its implications for fashion items. 2.1.1. The nature of the goods This exclusion prohibits a sign which results from the nature of the goods themselves. Shapes that are indispensable to the function of the goods in question must, in principle, be denied registration, even if the producer of those goods makes an essential personal contribution to the particular shape. The prohibition has the underlying purpose of preventing trade mark law from granting a monopoly on functional characteristics of a product to the detriment of competitors. This has the effect of allowing competitors to develop other forms of the good in question.18 In Australian law the equivalent question is addressed in terms of distinctiveness: will other traders acting with proper motives wish to adopt the same or a substantially identical or deceptively similar shape for their goods? The answer is likely to be ‘yes’ where the shape is entirely functional or has a particular signification in the context of the goods for which its registration is sought. It will also be yes where the shape has a technical function (see (ii) below).19 Thus the approach to distinctiveness has a similar tenor to the express exclusion in France and the rest of Europe. In fashion, the main case law concerning this prohibition is related to the sole of shoes. The most famous French case concerns the Louboutin trade mark representing a red sole on a woman’s shoe.20 The French Supreme Court held that neither the shape nor the colour was determined with sufficient clarity and that if the trade mark could be identified as a sole, its shape seemed to be imposed by its nature.21 The trade mark was therefore invalidated. More recently, the Paris District Court ruled that a registered trade mark representing a non-slip spiked sole22 was invalid on the ground that its shape was dictated by the nature of the product.23 The court held in particular that the few other distinctive elements were insufficient to identify the product in question. Thus, if the shape is represented in combination with sufficient distinctive elements, it might be adopted as a trade mark. 2.1.2. Necessary to obtain a technical result This exclusion prohibits a sign representing a shape that is necessary to obtain a technical result. For example, the Court of Justice of the European Union (CJEU) recently ruled that the Rubik's Cube shape is not registrable as an EU trade mark given that this shape included a technical solution consisting of its rotational capacity.24 In this case, the General Court had taken the view that the technical solution characterizing the Rubik’s Cube did not result from the characteristics of that shape but from an internal and invisible mechanism of the cube and thus considered that the Rubik’s Cube shape was eligible for trade mark protection. Contrary to what the General Court had found, the CJEU pointed out that the essential characteristics of the cube shape in issue had to be assessed in light of the technical function of the actual goods represented. In particular, one should take into consideration non-visible elements of that shape, such as its rotating ability. Moreover, the CJEU specified that the fact that the registration was sought for ‘three-dimensional puzzles’ in general, without restriction to those which have a rotating ability, cannot preclude the technical function of the actual goods represented by the cubic form in question from being taken into account. It may even make it essential, since the decision is liable to affect all manufacturers of three-dimensional puzzles with cube-shaped elements. The existence of other shapes that achieve the same technical result does not render the ground for refusal of registration inapplicable. In fashion, there has never been an application of this ground in case law. That being said, such a prohibition might apply to future texture trade marks, which could represent a technical solution. 2.1.3. Substantial value to the goods The third exclusion prohibits the registration as a trade mark of signs that give substantial value to the goods, that is, those which determine commercial attractiveness (for example, the shape of an haute couture garment), but is not be limited purely to the shape of products having only artistic or ornamental value.25 In the landmark CJEU case of Benetton v G-Star,26 G-Star registered two shape marks representing the shape of jeans and covering in particular the stitching and cuts on the kneepads of the trousers.27 In its counterclaim, Benetton sought an annulment of the two trade marks on the ground that as a result of their beauty or original character the shapes at issue determined the market value of the goods to a great extent. In Benetton’s view the consumers would buy the G-Star jeans because they regarded the stitching and cut of the jeans as attractive and not because they recognized the stitching and cut as a G-Star product. G-Star, for its part, argued that it had conducted intensive advertising campaigns to give these particular jeans recognition as a G-Star product. Therefore, the reputation of the jeans at issue was, according to G-Star, largely attributable not to the aesthetic attractiveness of the shape but to consumer recognition of the trade mark. However, according to the CJEU, a sign which initially consisted exclusively of a shape giving substantial value to the product can never become a valid trade mark regardless of the intensive advertising campaigns focused on the attractive shape of the product. The impediment to registering such shapes as a trade mark at a later stage will thus never be removed; in contrast, in Australia the matter would be decided purely on the basis of capacity to distinguish, in theory a shape initially inspired by aesthetics could become distinctive enough by use to be registered on the basis of acquired distinctiveness (including because of promotion and advertising).28 This prohibition has been repeatedly considered by French courts. In 2016, the Paris District Court cancelled an EU trade mark consisting of the shape of a watch along with the word ‘ICE’ on the ground that ‘the shape of the product is to be regarded as the dominant element of the mark which gives substantial value to the product’29. One can criticize the absolute and radical prohibition, based as it is on the subjective notion of ‘substantial value’. The Max-Planck Institute, concerned with the absolute nature of the prohibition, recommended either an abrogation of the provision or to amend it by allowing registration of signs consisting exclusively of the shape which gives substantial value to the goods when such signs have acquired distinctiveness through use.30 This would be in line with the current situation in Australia. However, the EU Commission chose not only to retain the exclusion but to extend it, so that now the objection applies not only to shape marks but to any sign. Thus, if any characteristic of a sign, including its shape but perhaps also its colour or pattern, gives substantial value to the goods then the sign cannot be registered. This is of great significance to the fashion industry, which has a particular interest in exactly such signs. The express exclusions result in some key differences between EU and Australian laws regarding the requirement for trade mark registration. In the fashion field they prevent time-limited rights from being transformed into a trade mark monopoly. The exclusions do not per se keep the sign free for other competitors but shift the legal setting to design, copyright or patent law. Without trade mark protection, businesses in the fashion industry such as G-Star can only rely on design and copyright to obtain exclusivity in the shape of their products. 2.2. Distinctiveness of a decorative mark In Europe and Australia distinctiveness is a core requirement for registration of both traditional and non-traditional marks. Distinctiveness goes to the heart of a sign’s ability to function as a badge of origin. Registration is thus not available to signs that consist of the necessary usual designation of the goods or services for which it is sought, or that are descriptive of characteristics of those products or services. Distinctiveness is a relative concept and trade mark law combines aspects of inherent and acquired distinctiveness. The less inherently distinctive a sign is, the more the applicant for registration will have to prove that it has acquired distinctiveness in the mind of the consumer. Where a sign is inherently lacking in distinctive character, the ability of a given mark to distinguish one trade mark owner’s goods from those of another will depend on the extent of its use as a trade mark. Inherent characteristics of the goods, such as their visual appearance or decoration, will not be normally perceived by consumers as a badge of origin. Decorative features such as a colour, pattern, stitching or garment shape are features of a garment itself, and thus not inherently capable of distinguishing goods as to their commercial origin. However, with use as a trade mark, they can become registrable on the basis of acquired distinctiveness. Naturally the extent to which such signs are already in use by other traders will also be determinative of their capacity to distinguish. 2.2.1. Inherent and acquired distinctiveness In Australia a sign that has absolutely no inherent distinctiveness, such as a simple colour or a functional or purely decorative aspect of a garment, can in theory achieve registration by way of proof of acquired distinctiveness (ie through use as a trade mark). There are few, if any, examples of this occurring in relation to fashion, but by analogy the colour purple (the ‘Whiskas Purple’) was successfully registered in Mars Australia Pty Ltd v Société des Produits Nestlé SA.31 Mars Australia developed a particular shade of purple colour and used it systematically for 10 years in Whiskas cat food advertising and packaging. The Federal Court of Australia found that the ‘Whiskas purple’ could function as a trade mark because it was capable of distinguishing Mars’ goods. It had been specially developed, was extensively advertised and a survey revealed that consumers associated the shade with Whiskas cat food.32 The concern that other traders should be free to utilize purely decorative or functional features can thus be displaced by sufficient proof of acquired distinctiveness. This could for instance apply to a colour or shape mark used in or on a fashion item (the Tiffany blue is registered in Australia, as is the Gucci buckle). The Australian TMA also operates on the basis of a presumption of registrability, which now also (since recent amendments; see section 33 and 41) applies to the question of distinctiveness. Only if the examiner finds a ground for refusal is clearly established should an application be rejected. In Europe, the criteria for assessing the distinctive character of three-dimensional trade marks consisting of the appearance of the product are not dissimilar from those applicable to traditional trade marks. The distinctive character of these trade marks is thus assessed by taking into account the perception of the public to which the trade mark in question is directed and the products and services for which protection is sought. However, for the purposes of assessing distinctiveness, the relevant public’s perception is not necessarily the same in relation to all types of marks, and may be more difficult to establish in relation to certain categories of marks. Public perception of three-dimensional trade marks is relatively low given that ‘average consumers are not in the habit of making assumptions about the origin of products on the basis of their shape’.33 Therefore, it was held that ‘only a mark which departs significantly from the norms and customs of the sector and thereby fulfils its essential function of indication origin, is not devoid of any distinctive character’.34 For example, the shape of a handbag has been held not to have any inherent distinctive character.35 This makes the bar for distinctiveness of a three-dimensional mark quite high. It should be noted that this standard has then been transposed to two-dimensional marks36 and to figurative marks consisting of a part of the shape of the product that its represents ‘as the relevant public will immediately and without further thought perceive it as a representation of a particularly interesting or attractive detail of the product in question, rather than an indication of its commercial origin’.37 Validity is, of course, influenced by the products covered by the trade mark registration. An example of this subtle appreciation is provided by the Louis Vuitton case for a locking device where the same trade mark has been considered as valid when applied to certain products such as rings, watches, but invalid for other products such as jewel boxes or travelling bags.38 Further, unlike the EU Directive and the EU regulation, the French intellectual property code does not set a specific requirement of distinctiveness. However, the INPI and French courts tend increasingly to assess the validity of a trade mark on the basis of distinctive character autonomously,39 so that there is a resulting material difference in the assessment of distinctive character between EU and French courts. The particular severity of EU courts’ assessment can be seen in the Voss of Norway.40 In this case, the CJEU dismissed an appeal against a declaration of invalidity made by the General Court which held in particular that (i) the fact that the EUIPO Board of Appeal did not establish that there were other similar bottles on the market does not affect the 3-D shape being devoid of any distinctive character and that (ii) even if the applicant’s bottle is ‘one of a kind’, that does not by itself mean that it departs significantly from the norms of the sector and that it therefore has distinctive character. French case law adopts a more liberal approach. For instance in fashion, the Louis Vuitton locking device has been considered as devoid of distinctive character by EU courts.41 By contrast French courts upheld its distinctiveness on the ground that ‘None of the locking devices submitted by the defendant reproduce or come close to the combined lines of the plaintiff’s 3-D mark.’42 Similarly, according to the General Court, the trade mark consisting of the shape of a Bottega Veneta handbag, which was rectangular and had rounded edges, does not depart significantly from the norms and customs of the sector as they result from the applicant’s internet search,43 whereas the shape of another Bottega Veneta handbag has been held to be distinctive by French courts given that the handbags submitted by the defendant did not reproduce the features of the Bottega Veneta handbag and thus that the shape of the plaintiff’s 3-D mark departs from the norms and customs of the sector.44 2.2.2. Acquired distinctiveness of a decorative mark It may be that such features have become almost exclusively associated with a particular fashion brand, and have come to perform a ‘badge of origin’ function in the eyes of consumers. In other words, such features might acquire, through use as a trade mark, sufficient distinctiveness to qualify for registration as a mark. However, the more commonplace and standard the feature is, or the more associated with a particular function or standard visual aspect of a garment, the less likely it is to achieve sufficient distinctiveness. Critically important is the fact that long-standing use or application of a particular feature does not in and of itself qualify as a basis of acquired distinctiveness. The use must be perceived as performing the function of a trade mark (ie a badge of origin). The more striking, unusual, frivolous or unconnected to the nature and function of a garment a feature is, the more likely it will be perceived as performing a trade mark function. In other words, just having a certain pattern or a particular colour on a dress consistently over time does not mean that the pattern or colour functioned as a trade mark. In the EU, the applicant must now establish that the trade mark has acquired distinctiveness in the territories of each Member State in which the trade mark lacked inherent distinctive character,45 rather than in relation to a substantial part or the majority of the relevant public in the EU as previously held.46 Furthermore, distinctiveness can be assessed either before or after the trade mark’s registration. In France the distinctive character of a trade mark used to be assessed at the time of the application. However, in the venteprivee.com case,47 the Paris Court of Appeal took into account the use that has been made of the trade mark subsequently to its registration. To do so, the court interpreted Article L.711-2 of the French Intellectual Property Code, which states that the distinctive character can be acquired through use in the light of Article 3(3) of the EU Directive 2008/95, specifying that a trade mark shall not be refused registration or be declared invalid … if, before the date of application for registration and following the use which has been made of it, it has acquired a distinctive character. Any Member State may in addition provide that this provision shall also apply where the distinctive character was acquired after the date of application for registration or after the date of registration. This case law foreshadows the transposition of the new Trade Mark Directive, which made clear that distinctive character may be also be assessed after the date of registration.48 In the fashion field, EU courts have held in particular that a position mark consisting of a red rectangular label at the left upper edge of a pocket of a pair of trousers, appears as having acquired a distinctive character through use.49 A critical distinction regarding distinctiveness between France and Australia is that in Australian law one can register a trade mark purely on grounds of acquired distinctiveness, whereas in Europe acquired distinctiveness is irrelevant where one of the a priori exclusions applies, for example where substantial value is added to the product by the mark.50 The applicant must establish that at the time of application, use of the mark as a mark has been sufficient for it to be considered capable of distinguishing the goods or services in question. A particular feature of a fashion item may perform a decorative or practical function, but even so become seen as a ‘badge of origin’. That could be the case for a certain colour consistently applied,51 for instance not just to goods but to packaging and in the context of advertising, or to an otherwise simple feature with structural overtones. Thus the implication of the Adidas decision in Australia is that if a particular feature, otherwise simple and visually appealing, is consistently applied in a particular position and manner on goods it can be held to be sufficiently distinctive.52 There can be sufficient use as a mark even where the feature also performs a decorative function, or other non-trade mark function. 3. Various examples of decorative marks Relevant factors for assessing a shape mark’s ability to fulfil its essential origin function apply equally to pattern, shape, colour or position marks. To be distinctive, the relevant consumer must be able to distinguish the sign from the normal appearance of the product such that it is likely to be understood as itself indicating origin, or the sign must depart significantly from the norms or customs of the sector. The questions can relate to the products proper or to some addition to the product such as the Gucci bridle trade mark, or the Louis Vuitton locking device. 3.1. The pattern of a garment Patterns are all the rage on clothing, footwear, textiles and more. Designers have even associated entire lines or seasons with particular patterns and had great success. Nearly every consumer can think of a pattern that is identified with one brand owner: the check of a Burberry coat, the monogram or checkerboard pattern on Louis Vuitton bags, or the stylized GG pattern on Gucci handbags. All comprise patterns that immediately act as source-identifiers. It should however be emphasized that, as seen in the section ‘Distinctiveness of a decorative trade mark’, EU courts are more severe than French ones in assessing the distinctiveness of a decorative feature of a garment. This is also apparent in relation to patterns. For example, at the EU level, the tartan trade mark from a German company was cancelled on the basis of a lack of distinctiveness.53 By contrast, the Burberry check was held distinctive by the Paris Court of Appeal.54 Patterns which are commonplace in the fashion sector and do not contain any eye-catching features lack distinctive character as a consumer will not perceive them as anything other than a mere decoration, except if they have acquired distinctive character through trade mark use made of them. It is, however, quite challenging to obtain registration as an EU trade mark. For instance, in April 2015 the Louis Vuitton damier pattern trade marks (the famous brown and beige chequerboard pattern and the light and dark grey version) were invalidated by the General Court for lack of inherent and acquired distinctiveness.55 The court found in particular that the chequerboard pattern was commonplace and did not depart significantly from the norms and customs of the leather goods sector. Furthermore, Louis Vuitton had proved the acquired distinctive character of its trade marks for some, but not all, of the EU Member States. Thus, the evidence was insufficient to prove the acquired distinctive character throughout the EU. There do not appear to be any court decisions concerning patterns for garments and apparel in Australia. However, in a published decision of a Delegate of the Trade Mark Registrar, opposition to the registration of a pattern described as ‘the patterning appearing on the strap of the flip-flop’ (quintessential Australian footwear) was successful.56 The opponent’s main submission was that the ordinary signification of the pattern was ornamentation. The pattern was not so imaginative or unique that other traders would not want to use it—as they had in fact done. The Delegate pointed out that matter that is purely ornamental or decorative is unlikely to function as a trade mark. The Delegate formulated some useful guiding questions to ask in relation to an ornamental feature, and whether it is ‘capable of distinguishing’ goods: Is it a ‘common’ basic shape or design? Is unique or unusual in a particular field; Is it a mere refinement of a commonly adopted and well-known form of ornamentation for a particular class of goods; and Has the same or similar sign been used to perform a trade mark function (ie inform the public about origin of product)? 3.2. Position marks Position marks comprise a specific sign and its position on and in proportion to a product. In Europe case law tends to underline the inherent low distinctiveness of those trade marks. Many position marks which did not depart significantly from the norm or customs of the sector have been denied registration and, in particular, the red aglets of a shoe,57 the orange colouring of the tip of a sock,58 the five parallel stripes of a shoe,59 the two parallel stripes positioned on the side of both sleeves of long sleeve shirts and on the lower part of panel pants60 or of a stylized flower on the lapel collar of a garment.61 The best way to save the position mark is to establish that the position mark or more generally a decorative trade mark has acquired a distinctive character through use.62 In the Australian context, a position mark is not considered a separate kind or category of mark, so the same general principle will apply to a shape mark or a colour mark. The essential question will be what exactly was used as the mark. 3.3. Colour marks In Europe, although neither the Directive nor the Regulation mention colour in the definition of a trade mark, it is established that lists within definitions are not exhaustive. Thus, any sign, including a colour as such, can become a trade mark if it satisfies the legal requirements. For this reason, French law expressly states that ‘the placement, combinations or nuances of colours’ could constitute a valid trade mark (711-1 IP code). Colours and combinations of colours have been increasingly used to distinguish and identify the origin of luxury and fashion products. For example, one could point to the Hermès orange, the shocking pink of Elsa Schiaparelli, the Balenciaga red and the blue hue of Richard Nicoll. A new Pantone shade called Nicoll Blue, has been even created in homage to Richard Nicoll.63 The selling power of colour can be traced to two sources: emotional imagery and the desire for individuality and personal expression through colour selection. However, colour as such will only have distinctive character in exceptional cases. In assessing whether a colour is capable of constituting a trade mark, it is carefully assessed whether a registration unduly limits the availability of colours in any way. For instance, in the Libertel Groep case, the CJEU considered that a mark consisting of a single orange rectangle and described as ‘orange’ without reference to any colour code was devoid of distinctive character within the Trade Mark Directive.64 The red featuring on the sole of Louboutin’s high heels underlines the subtlety of that issue. The French registration of Louboutin’s red sole trade mark was cancelled by the French Supreme Court since the trade mark description was found to be too vague because of a lack of precision of the colour.65 As a reaction, Mr Louboutin filed a new French trade mark application on 25 October 2011 covering a specific shade of red referenced by a Pantone code (Pantone 18.1663TP) and applied to the sole of a shoe. According to French case law, it is possible that the new Louboutin trade mark application could be successful in France. Indeed, it has already been held that the designation of the color by means of an identification code which is internationally known could suffice to satisfy the requirement of precision for a trade mark application. At EU level, the EU General Court has recognized the validity of Louboutin’s colour trade mark which was identified with sufficient precision.66 However, in 22 June 2017, the European Court of Justice’s advocate general, Maciej Szpunar, issued an opinion regarding the validity of the Louboutin trade mark consisting of the color red (panton 18.1663TP) applied to the sole of a shoe. According to him, said trade mark is “a mark consisting of the shape of the goods and seeking to protect a certain color in relation to that shape”. If the CJEU follows the advocate general’s opinion, Louboutin’s red sole trade mark will potentially be declared invalid under Article 3(1)(e)(iii) of the Directive according to which a trademark shall be liable to be declared invalid if the sign consists exclusively of the shape which gives substantial value to the goods. However, the concept of a shape which “gives substantial value” to the goods, within the meaning of that provision, relates only to “the intrinsic characteristics of the shape”, and does not take into account “the reputation of the mark or its proprietor”. To overcome the prohibition under Article 3(1)(e)(iii), Louboutin will thus need to prove that the attractiveness of its high heels arises from their reputation or from the reputation of the Louboutin company and not from the intrinsic value of the shape at issue. At the same time, the assessment must establish whether the relevant public can identify the origin of the goods or services from the mark and distinguish them from other undertakings. For example, In Think Schuhwerk v OHIM, shoes with red tips on the ends of shoelaces were found not to be distinctive because the colour of parts of the laces on a shoe are not usually perceived by the public as an indication of commercial origin.67 Nevertheless, a colour mark may acquire distinctiveness through use,68 unless the coloured shape is not registrable on the basis of a priori exclusions. In Australian law there are few court decisions directly related to non-traditional fashion trade marks. However, Louboutin successfully registered the famous sole in a particular shade of red,69 and this has seen Australian designer, PeepToe shoes, change their sole colour to purple.70 Cases relating to colour marks and shape marks for goods in other classes are relevant by analogy. As there are no a priori statutory exclusions in the Australian TMA, everything falls to be decided by reference to the legal standard of distinctiveness. As indicated above, the relevant provisions function on the basis of a presumption of registrability as well.71 On the face of it, therefore, there seem to be fewer obstacles to registration of shape marks or pure colour marks in Australian law. However, the courts have taken a careful and deliberate approach, insisting that common shapes and colours should remain available for competitors to use. Therefore if a shape is not a frivolous variation or addition to a basic form that competitors would legitimately expect to be able to adopt and use, it will not normally be capable of being registered. There are no published decisions that consider shape marks in fashion items, so we can only proceed by analogy from other matters. In Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks,72 the shape of a confectionery for children was able to be registered, because it did not sufficiently resemble a real insect or bug, and therefore did not potentially obstruct the legitimate use of a real-world shape in the manufacture of such confectionery by others (representative insect and animal shapes being commonly used for children’s confectionery, etc). In the same manner, standard structural elements of garments, shoes or apparel will not normally be eligible for registration of a trade mark; whatever is sought to be registered must be perceived as being capable of performing a trade mark function. A strap or reinforcement of a shoe is a structural element all should be able to adopt—as emerges indirectly from the Adidas decision.73 Similarly, in relation to colour, standard colours in common use in a particular sector or with a particular significance (such as red for emergency goods and services) will not normally be registered. However, a colour that is striking or unusual for the goods concerned may well achieve registration, such as the terra cotta colour for agricultural plastic piping which is almost universally a standard white.74 As, in Australian law, it is theoretically possible for colours as such to be registered on the basis of acquired distinctiveness (ie on the basis of previous use as a trade mark), two main issues arise. First: are others in the market also actual or potential users of the colour? Secondly: has the sign acquired distinctiveness because of its use as a trade mark? The character of the use is critically important, and the identification of that character is by reference to consumer perception. Since there are no Australian decisions concerning colour trade marks for fashion items, we again have to proceed by analogy. In Re BP PLC,75 a green colour was unsuccessful in obtaining trade mark protection because the shade was not adapted to distinguish the goods and services. In this decision the Delegate found that whilst there was an association between the particular green and the oil and petrol company BP, the association alone could not establish that the trade mark had acquired the secondary meaning of distinguishing the applicant’s goods and services.76 Ultimately, it was found that consumers would not take any use of the green in relation to all designated goods and services as indicating those goods and services provided exclusively by the applicant. 77 The inherent nature of the alleged mark is one reference point—is it in some way unusual in the context of the goods (eg a non-standard colour such as the Cadbury violet)78 or a frivolous shape (such as one might find on a perfume bottle)? Consistency of use in relation to a range of goods (eg a number of different garments in a range) may also indicate use as a trade mark. Finally, use that appears to consumers as serving the purpose of distinguishing goods or identifying their commercial origin is most important. If use only appears to serve a functional or decorative purpose, then it will not amount to trade mark use and will not be able to support an application on the basis of acquired distinctiveness. What might be perceived as trade mark use was considered in the Philips v Remington case, where the prominent display of a particular feature, its pictorial representation on packaging and so on were advanced as examples of what might appear as trade mark use.79 However, certain colours and features are so standard or so inescapably functional (eg red for medical or emergency services, green for environmental) or decorative that it is hard to imagine that they would ever be able to achieve registration by trade mark. In particular in the fashion world, numerous features of garments and apparel are standard because of functionality, tradition or trend. Certain decorative patterns and features of ornamentation may not be current in a particular season, but return with cyclical regularity as standard variations on a theme. The same can be said about colours. Some aspect of a fashion item will have to stand out as different from the usual pattern of reoccurring regular trend-governed variations to attract possible trade mark protection. Thus, relevant comparative observations in terms of fashion are that where a garment feature represents unadorned functionality it will be virtually impossible to register it in Australia and in Europe: in Europe, the solution is established by express statutory prohibitions, whereas in Australia this results from the application of general distinctiveness requirements. Where the mark concerns a usual or habitual colour, pattern or ornamentation, the registration might be difficult as well. But it is not impossible for a very particular feature which combines a functional or decorative element with something additional or atypical to be registered after extensive trade mark type use. The validity is nevertheless always conditioned by its distinctiveness. A standard colour in the context of the industry or category of goods concerned as well will be extremely difficult to register in Australia and Europe. Since there is commonly a wide variety of colours used in fashion, it is safe to say that registering a single shade of primary colour as such is virtually impossible, except if the colour has acquired distinctiveness through very long and consistent use (for instance: Hermès orange, or the red Louboutin shoe sole). In some cases, the application does not really relate to a colour as such, but a colour in a particular position on a product. In other words, the major distinction between France and Australia is that under Australian law, one can in theory register a trade mark which has acquired distinctiveness, whereas in Europe acquired distinctiveness is irrelevant where one of the a priori exclusions applies, as noted above. For example, in Benetton v G-Star, the shape of the product gave substantial value and the registration was rejected.80 In practice, in fashion, most cases involve distinctiveness issues (eg, the Louis Vuitton damier pattern on a locking device, the Louboutin red colour, or the Burberry check), and very few cases are related to the a priori exclusions. 4. Infringement of non-traditional marks There is limited utility in achieving registration of a non-traditional trade mark, if it is too difficult—or impossible—to prove infringement. The first part of the test to be conducted lies in the comparison between the marks at hand, the purpose of which is notably to determine whether they are identical or if they bear similarities that can mislead consumers. In a case concerning infringement of a non-traditional mark, a plaintiff shall also especially have to establish use of the registered mark (or a substantially identical or deceptively similar mark) ‘as a trade mark’ by the defendant. Since trade mark’s role is to provide consumers with a reliable indication of the commercial origin of the goods, only unauthorized use of a sign that might be interpreted by relevant consumers as badging an origin may infringe rights in a registered mark. The question as to whether the use of a sign is ‘as a trade mark’ or for a purely decorative purpose is probably one of the thorniest issues as regards to the use of patterns, colours, figurative drawings and non-traditional shapes that are used in the field of fashion industry. 4.1. Comparison of the prior mark and the impugned sign 4.1.1. Existence of a likelihood of confusion in the consumer’s mind The existence of a likelihood of confusion in the consumer’s mind does not have to be proved each time a trade mark use is alleged to infringe a registered trade mark. In Australia, as long as the goods on which a (substantially) identical mark is allegedly used are of the same kind as those for which the mark is registered, liability follows automatically: there is no need to prove consumer confusion.81 Liability is arguably strict. A similar situation exists in the EU; where the registered goods and the goods of the alleged infringer are the same and the trade marks are identical, there is no requirement of confusion.82 In our paradigm case (for instance, a competitor applies a Burberry check to the inside of a raincoat), there is no doubt as to whether the goods are similar or not. Proving likelihood of confusion could be required if the mark is allegedly used on goods that are not covered by the registration, or if there are some differences between the registered mark and the mark used by the defendant.83 In Australia as in Europe, it is a significant issue if the mark as used by the defendant is somewhat different from the mark registered: a slightly different pattern, a different shade of a colour, or some modification of shape. The risk of confusion should be assessed globally, taking into consideration both similarities between the signs, and the products or services.84 Such a test is applied to traditional marks as well as to non-traditional marks. 4.1.2. Impact of the use of the prior mark in the assessment of a likelihood of confusion EU and French judges traditionally adopt a global and objective conception of the risk of confusion. Since the rights in the trade mark are granted by the registration with the European Union Intellectual Property Office (EUIPO) and not through use of the mark on the market, comparison between the marks normally has to be assessed by reference to the impugned sign with the prior mark as registered and not as exploited. In this respect, the General Court stated for example that: In order to assess the similarity between a complex figurative mark and an earlier word mark, the particular graphic or stylistic aspects that the earlier mark might adopt are irrelevant. In any event, the assessment of the similarity with the earlier word mark, which is the only relevant assessment in the present case, should not be replaced by an assessment of similarity with a figurative element which does not form part of the protection conferred by the earlier registration.85 The comparison is therefore conducted in abstracto, with reference to the registration of the sign at hand, which means that the conditions of commercialization of the products, as well as the way the prior mark is used amongst consumers, are irrelevant to assess whether consumers might be subject to a likelihood of confusion. This makes the approach of trade mark infringement different from the unfair competition approach. However, the above statement must be qualified, because it has been conceded for many years that the extent of the reputation of the earlier trade mark has to be taken into consideration in the assessment of likelihood of confusion. In the Sabel case, the CJEU indeed ruled that ‘the appreciation of the likelihood of confusion depends […] in particular, on the recognition of the trade mark on the market.’86 In the Lloyd case, the CJEU then ruled that, in making the assessment of the likelihood of confusion, the degree of distinctiveness of the earlier mark should be taken into consideration. Yet, to assess the distinctiveness, account should be taken, in particular, of […] the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations.87 In view of these statements, one readily observes that the scope of the protection that is granted to a mark by virtue of the EU regulations and EU Member States’ laws does not only result from the abstract trade mark registration but from real factors linked to the perception consumers acquire from the use that is made on the market. Some recent decisions tend to demonstrate that a method of comparison that takes into account the earlier mark as actually used, rather than as described in the registration, is increasingly favoured. In an important decision of 18 July 2013 the CJEU ruled that where a trade mark is not registered in colours but is widely used in a colour or a combination of colours, so that a large part of the public establishes a link between the mark and such a colour layout, those colours should be taken into consideration when assessing the likelihood of confusion with another mark. This results in the assessment of the likelihood of confusion on the basis of something that is unconcerned with the registration of the prior mark. In this particular case (Specsavers), the CJEU ruled that ‘ where there is a trade mark which is registered not in a particular colour or characteristic, but in black and white, the colour or combination of colours in which the trade mark is later used affects how the average consumer of the goods at issue perceives that trade mark, and it is, therefore, liable to increase the likelihood of confusion or association between the earlier trade mark and the sign alleged to infringe it.88 By way of contrast, in Australia a registered trade mark will be considered to cover all colours, whether the representations in the application are in black or white or a particular colour. However, in some situations it will be necessary to specify the colour (in effect to limit the registration to a particular colour) to escape objections based on similarity to other marks or particular exclusions and so on. What counts is the overall impression of the mark in the minds of consumers, and in some cases colour will be more significant than in others.89 In France, the Court of Appeal of Paris went even further and ruled that ‘the likelihood of confusion, that must be assessed globally in view of the overall impression produced by the marks at hand, implies that the invoked trade mark has been put to genuine use amongst consumers.’90 While it is true that, in a 2011 ruling, the French Supreme Court seemed to consider that likelihood of confusion has to be assessed in concreto, further to a comparison of the disputed mark with the prior mark as used,91 the CJEU recently stated on the contrary that the absence of genuine use of a trade mark in the market shall not be taken into consideration as relevant to the decision whether there exists a likelihood of confusion between this mark and another mark.92 At first glance, one would consider such finding to follow the principle according to which the protection of trade marks derives from the registration within the EU and is disconnected from the use of the mark on the market. It remains that the wording used by the CJEU in this decision reveals if not a complete change, at least an evolution of the paradigm. Thus, to the CJEU, the provisions of the EU Trade Mark Regulation according to which the rights of the proprietor of a registered mark cannot be revoked until the five-year period following registration has expired ‘confer on the proprietor a grace period for beginning genuine use of his mark, during which he may rely on the exclusive rights which the mark confers’ despite the absence of genuine use during this period.93 The terminology used by the court (ie the ‘grace period’), is remarkable since it means that the protection is granted to the mark subject to the existence of a genuine use at the end of the five-year period, while the usual approach in countries of protection through registration like France lies in the assertion that the mark enjoys a protection from the sole fact it is registered and can be revoked because of non-use in a five-year period. This change of terminology does not only reveal a change of approach from a pure theoretical standpoint but might also have a practical effect as to the consequences of a revocation decision further to a five-year non-use period. While such revocation normally takes effect from the expiration of the five-year period of non-use, considering such period as a ‘grace period’ could mean that a revocation decision has to take effect retroactively and might therefore deprive the mark of any protection from the very day its proprietor ceased using it. As far as the EU trade mark protection system is concerned, this issue shall be of interest over the next few years, in particular with respect to the provisions of EU Directive 2015/2436 that were adopted in December 2015. These provision link the scope of protection granted more tightly than before to the mark with its actual use in the market.94 In Australia the courts tend to stress that it is the mark as registered which should be comparted with the impugned mark, and not the mark as used by the trade mark owner. In fact, trade mark owners might fall foul of this requirement, by having an ill-described trade mark in the application, or by not following up changes in trade mark use with amendments of the register. This can be a significant issue as well in obtaining registration, as this may depend of the use of the mark as described in the application as a trade mark, rather than something different (eg when seeking to register a single mark it may be that the court holds that the particular colour was in fact always used in conjunction with another, the combination making up the relevant mark). Note however that, as mentioned above, unless a limitation to a particular colour is specified, a registration will be considered to cover all colours in Australia.95 In terms of the assessment to be made where there are some differences between the registered mark and the impugned mark, critical questions in Australian trade mark law are: what constituted the mark actually used by the respondent; and what surrounding factors can be taken into account? The assessment of trade mark infringement requires determination whether the two marks are deceptively similar; the overall impression of the two marks is the key reference point, and the practical question is whether the two marks so closely resemble each other as to cause confusion or deception. A typical consumer with a recollection of the registered mark, who comes across the impugned mark as used, would at least have to be confused as to a possible connection with the registered mark. The assessment is a narrower one than for passing off—not all the elements or circumstances of the alleged infringer’s conduct are relevant. In essence, trade mark law requires a comparison of the marks themselves; the question is what ‘relevant context’ can nonetheless be taken into account in construing this exercise. In relation to this, the court in the Adidas matter had the following to say: ‘In my opinion, the issue being one of fact, what the relevant context comprehends must vary with the marks in question, to what those marks are applied, and the circumstances in which the marks will be observed and compared.’ Price differences and the different character of purchasers were to be given little weight as ‘the evidence does not establish any clear differentiation between the two when making the required comparison of the marks’. Therefore ‘On the facts of the present case, I give greatest weight to the marks being used on shoes and to a purchaser of the respondent’s shoes seeing them in the setting of a store and being able to look at them in that setting.’96 However, the assessment in trade mark law is in another sense broader than in passing off. Whereas for the latter it must be established that consumers would come to an erroneous conclusion, in the former to establish confusion is sufficient, that is, that a number of persons are caused to wonder as to the origin of the goods; the ordinary consumer need not come to an ultimate conclusion that is in error. This also played out in the Adidas case, where for the shoes with stripes that were positioned in the equidistant and slanted manner of the Adidas mark, and against a contrasting background, the court held infringement of the trade mark was proven, even though the impugned marks had four rather than the registered three stripes. Since the stripes as they appeared on the various competing shoes were not identical to the registered trade mark, the question was whether the use of the stripes on Pacific Brands’ shoes would cause a real tangible danger of confusion.97 Justice Robertson found that although the average consumer would not forget that Adidas bore three stripes, it could not be assumed that they would perfectly remember the amount of stripes. The judge concluded that there was a ‘real, tangible danger of confusion occurring, beyond a mere possibility, and a number of persons will be caused to wonder whether it might not be the case that the two products come from the same source.’98 4.1.3. Impact of a ‘family of marks’ Further to this approach, the CJEU allows to take into consideration the fact that the public might associate a given sign with a ‘family of marks’, based on the observation that the use of some close adaptations of a mark might lead consumers to perceive these adaptations as being part of a same family. The General Court notably applied this rationale in a case where the McDonald’s company had filed an opposition against an application for registration of a MACCOFEE mark on the basis of various prior marks formed from the prefix ‘MC’. Yet, the ability of the owner of a family of marks to rely on this doctrine exactly depends on their ability to demonstrate that the marks are genuinely used in the marketplace and perceived by relevant consumers as such a ‘family’. To the General Court, the relevant public cannot be expected, in the absence of use of a sufficient number of trade marks capable of constituting a family, to detect common characteristics in such a family and to establish a link between that family and another trade mark containing elements that are similar to those characteristics. Therefore, for the relevant public to establish a link between a trade mark in respect of which a declaration of invalidity is sought and a ‘family’ of earlier trade marks, the earlier marks forming part of that family must be present on the market.99 The ability to rely on the ‘family of marks’ approach in order to combat imitation is particularly interesting in the fashion sector where a lot of counterfeiters use patterns or figurative signs that, if not creating confusion with a precise registered sign, produce the impression that this pattern or design is in line with a ‘type’ of pattern or design that a house or a creator has managed to establish as the indication of origin of its garments due to the genuine and intense use of this ‘family’ of patterns or designs before consumers. For example, the ‘multico’ designs used for years on Sonia Rykiel’s garments could be regarded as such a family of marks. This question was at the crux of a recent case in France concerning the ‘Puma Formstrip’ brand. While the Court of Appeal of Paris found that the use by a competitor of a variant of the famous Puma strip on trainers was not confusing with Puma’s marks, the French Supreme Court ruled that the assessment of the lower court was incorrect. To assess the existence of a likelihood of confusion, the Court of Appeal should not have compared the alleged infringing strip to the ‘Puma Formstrip’ as used on the market, in connection with other word and/or figurative elements on Puma shoes but should have focused on Puma’s prior mark as registered.100 However, in this case the reasoning followed by the Court of Appeal of Paris was also grounded in the observation that the Puma Formstrip belongs to a family of marks with which it was possible to be led into confusion by the impugned sign. Contrary to the recent decisions of the CJEU that tend to approve of this doctrine when about the matter concerns assessing the infringement of well-known marks, the Supreme Court stated that this was inappropriate in this particular case. Thus, when under EU trade mark law, likelihood of confusion should normally be assessed based on an abstract reasoning, the abovementioned decisions tend to show that case law is at a crossroads as regards to this very question. As far as non-traditional trade marks are concerned, this is of concern, since slight variations do often exist between the mark as registered and the way it is actually used on the market. Assessing the likelihood of confusion with such marks, not in view of their registration, but in view of the way they are actually used and perceived by consumers on the market might favorably increase their protection. The weakness of these marks lies in the fact that they might be perceived as mere decorations rather than as real badges of origins. In the Australian context the matter is assessed as one of deceptive similarity, which is defined as follows in section 10 TMA: ‘For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.’ The assessment has to be made on the basis of the mark as registered, and its post-registration use or the fact that there are other registered marks with a common element, is in theory of no relevance. 4.2. Use ‘as a trade mark’ of a decorative feature The more significant question as to the protection of the non-traditional trade marks used in the fashion industry is whether adopting an identical or similar sign to a mark as a decorative feature for a competing garment amounts to trade mark use—or in the Australian jurisdiction—‘use of the mark as a mark’.101 4.2.1. Requirement of use as a trade mark Should the infringement be subject to the existence of a likelihood of confusion or not, once the design is registered as a trade mark, there is infringement only if the consumer perceives the design or shape as an indication of origin and not only as a decoration. Where the mark is more famous (eg the Burberry check), the sign will be more likely to be considered an indication of origin. But in a great number of cases—and even when the prior mark is renowned—defendants are tempted to submit that a non-traditional mark (a pattern, a position mark, etc) is not used and perceived as a mark but as a mere element of decoration of the garment. First, the fact that a pattern, a design, a colour, may be decorative does not preclude it from playing the role of a badge of the origin for the garment or item on which it is affixed. While such element might be decorative, it can also serve as a badge of origin. The two are not mutually exclusive in both Australian and EU laws.102 In other words, it is only if the figurative element is perceived exclusively as a decoration that its use shall be considered as legitimate and not trade mark use. Such precision is decisive in regard of the fact that today in fashion, trade marks are more often used in a decorative or attractive manner, either by using existing traditional marks to decorate garments (such as the Hilfiger example) or by using consistent and typical decorative elements as indicators of origin (the Hermès orange, for instance). Although not strictly related to a fashion garment since it concerned shoes, some decisions concerning the Adidas triple-stripe mark can illustrate this principle. There have been relevant decisions in Australia,103 as well as in Europe. In Australia, Adidas brought proceedings for trade mark infringement against Pacific Brands, which was producing shoes with four stripes. The defendant argued that use of four stripes on the side of shoes was not use as a trade mark, and that the stripes were not deceptively similar to the Adidas trade mark. To Pacific Brands, the stripes were a purely decorative element and the products at hand did not share the same nature and distribution channels.104 As a result, and given the widespread use of stripes on sports shoes on the market, Pacific Brands claimed that the use of four stripes was not use as a trade mark. On the contrary, Adidas emphasized that the location of the stripes (the side of the shoes), was the usual location of a badge of origin (as examples the uses of the Nike swoosh or the New Balance ‘N’ that usually appear on similar positions). Some expert evidence to that effect assisted the Federal Court of Australia in coming to the conclusion that consumers were accustomed to seeing a brand between the laces and the sole of the shoe, and since that was where the imitative four stripes appeared, they would be seen as performing a trade mark rather than a purely decorative function. In Europe, two important Adidas cases provided the CJEU with the opportunity to state that the fact the public views a sign as an embellishment is not in itself an obstacle to the protection conferred to trade marks by the national legislations of the EU Member States.105 It was first addressed in a case where Adidas’ claims were grounded on the provisions that grant protection to well-known marks.106 For these marks, the protection is not conditional upon the existence of a likelihood of confusion in relation to the origin of the products but to establishing that the relevant public is likely to make a ‘link’ or connection between the sign and the renowned mark.107 The solution was then extended to situations where the protection is granted subject to the existence of a likelihood of confusion. The court notably stated that the public’s perception that a sign is a decoration cannot constitute a restriction on the protection conferred by Article 5(1)(b) of the Directive when, despite its decorative nature, that sign is so similar to the registered trade mark that the relevant public is likely to perceive that the goods come from the same undertaking or, as the case may be, from economically linked undertakings.108 By contrast, this means that, if the public views the sign purely as an embellishment of the product, and absent any ‘use as a mark’, no protection shall be awarded to the prior mark. An analogy exists between Australian and EU laws as to the manner the courts assess the perception of the mark and the existence of a ‘use as a mark’. Both Australian and French courts tend to assess the situation globally and to decide whether the sign at hand is perceived as a mark or not depending on the convergence of various indicators. 4.2.2. Method of assessment French courts have particular regard for the extent of the reputation of the prior mark and the degree of similarity between the marks. For example, in a case that concerned the Agatha Scottish Terrier figurative mark, the French Supreme Court stated that, despite the public’s perception of the impugned sign as a decoration, that sign was so similar to Agatha’s registered trade mark that the relevant public is likely to perceive it as an indication that the goods come from the same undertaking or from economically linked undertakings. In its decision, the Supreme Court emphasized that the public would inevitably make the connection between the marks due to the Agatha trade mark’s strong reputation and the great similarity between the drawings.109 Another example of this method of assessment can be found in two decisions issued the same day by the Civil Court of Paris. In the first case, the court considered that the use of the drawing of a head of tiger on the face of a sweater did not infringe the rights in a prior figurative mark covering a head of a tiger and registered for garments. The rationale was that the public would not interpret such features as an indication of origin of the sweater, notably due to the dissimilarities existing between the mark and the sign, and as a consequence of the practices of the sector.110 However, it seems that the implicit rationale was the fact that the prior mark did not enjoy a particularly extensive reputation. On the very same day, the same chamber of the Civil Court of Paris indeed found that the use, on the face of a T-shirt, of a sign similar to a figurative mark registered by Louis Vuitton was trade mark use. In this decision, contrary to what they had stated in the other judgment, the court found that consumers are accustomed to perceiving decorative features on the face of T-shirts as potential ’badges of origin’. The distinguishing factor lay in the fact that the mark at hand enjoyed greater notoriety than the one that was invoked in the case concerning the tiger.111 One would conclude that the higher the reputation a fashion non-traditional mark enjoys, the better will be its protection against unauthorized use. In Australian decisions the extent of the reputation of the registered mark is considered a relevant factor. As the Federal Court of Australia said in Adidas: ‘[…], the strength or “fame” of a trade mark must be taken into account in assessing the imperfect recollection of the registered trade mark which was relevant in the deceptive similarity test.’112 Courts might also rely on other factors when assessing whether a sign is used as a mark and infringes a prior mark. They shall for example take into consideration the place where the sign is affixed in order to determine whether it is used as a mark or not. In a rather unusual case, the owner of a trade mark ‘Mister Fitness’ registered for garments was complaining about the use of this expression on aprons with the body of a muscled man wearing underwear on which these words were reproduced. In this case, the Civil Court of Paris thus ruled that the denomination is affixed to the waistband of the underwear worn by the body reproduced on the apron, while it is customary for a sign used as a mark to be inscribed on the undergarment belt. Consequently, the contested sign was used, not merely for decorative purposes, but under conditions such that, in the eyes of consumers, that use was made as a trade mark.113 Another indicator the French courts tend to take into consideration to assess whether the impugned sign is likely to be perceived as a mark or not is linked to the potential use of a house brand on the product. French case law is rather inconsistent as to the relevance of this criterion. In a case where the mark ‘100% Fille’ (100% Girl) was registered for shoes, the Civil Court of Paris ruled that the use of this expression on the face of a similar product (a T-shirt) was non-infringing. The reason was that ‘the name depicted on the label of the tee-shirt is the house brand Influx’.114 As far as trade marks in the fashion sector are concerned, some decisions even state that the only sign that plays the role of a badge of origin on a garment is the label, while any other pattern, design or expression could not play such role.115 Fortunately, such approach does not reflect the dominant position in French case law. Some other decisions indeed state that ‘two marks can coexist on a same product and do not annihilate each other nor have them to be considered globally’,116 and acknowledge that ‘the actors of this sector usually affix their marks on the face of their tee-shirts in order to allow the consumer to identify their commercial origin’ to rule, as a consequence, that the mere coexistence of two different signs on the label and somewhere else on a garment does not lead per se to the finding that the second is exclusively decorative.117 In Australian cases as well, it is common to ask whether a feature may appear less like a trade mark, because another sign present is so manifestly performing that function. This is relevant in terms of acquired distinctiveness but also in infringement. A lot will depend on the particular positioning and rendition of the mark, and whether it is normal to have head-brands and sub-brands present on goods. Sometimes a word mark may appear like an exhortation or statement rather than a brand. In Top Heavy the use of the trade mark CHILL OUT, registered for clothing, on the respondents’ T-shirts, where the terms were rendered in a manner where a Coca-Cola bottle made up the ‘’', was not infringing.118 The court held that ‘in general terms the message is … an exhortation to the reader … to relax’, rather than one relating to the trade origin of the T-shirts. Still, the distinctiveness resulting from trade mark use tends to limit the level of protection that is granted to non-traditional marks in the fashion sector. For these specific signs, in France unfair competition sometimes offers a tortious basis for a remedy, notably when the decorative nature of the sign undermines the case for trade mark infringement. In Australia only passing off or an action under s 18 of the Australian Consumer Law for misleading or deceptive conduct is available. Both require proof of consumer deception, and there is no recognized broader tort of unfair competition. Since all the circumstances (and not just the immediate confines of the marks) can be taken into account in passing off, the resulting broader inquiry may result in liability where a registered trade mark case would not (eg if other features are also similar or where there is slavish design imitation). However, proof of mere confusion is not sufficient—consumer deception must be established. 5. Conclusion In Europe, in particular in France, litigation on the basis of non-traditional marks is far more common than in Australia, although, in fact registrations between both Australia and Europe seem to carry similar numbers. In both jurisdictions, a trade mark can perform both a badge of origin and a decorative function. Although the law in Europe appears to be more restrictive because of the express exclusions, in practice there does not appear to be much difference between the two jurisdictions. The question asked in the context of distinctiveness in Australia is whether other traders acting with proper motives wish to adopt the same or a substantially identical or deceptively similar shape for their goods. The effect of asking this question is analogous to the application of the a priori exclusions mean in Europe. That in both jurisdictions advocates face the hurdle of having to establish the registered trade mark has been used as a mark, which is not always so straight forward in circumstances where that mark has decorative or functional aspects. Quite often, the sign used by the respondent is not identical to the registered mark and therefore the question of deceptive similarity arises and difficult questions concerning the extent of contextual information that can be taken into account plague the courts. Footnotes 1 See V. Atkinson, V. Azard, M. Malaurie-Vignal and W. van Caenegem. ‘Comparative Study of Fashion and IP: Copyright and Designs in France, Europe and Australia’ (2016) Journal of Intellectual Property Law & Practice, 11: 516–532. 2 World Trade Organization, ‘Agreement on Trade-Related Aspects of Intellectual Property Rights’, available at https://www.wto.org/english/tratop_e/trips_e/t_agm0_e.htm. 3 Burberry Limited Trade mark No. 000377580 (Europe) and No. 708955 (Australia). 4 Tommy Hilfiger ‘H’ Trade mark No. 002952596 (Europe) No. 975838 (Australia). 5 Louis Vuitton Paris Trade mark No. 3675908 (France), No 9844127 (EU trade mark) and No. 1351113 (Australia). 6 Burberry Limited Trade mark No. 000377580 (Europe) and No. 708955 (Australia). 7 Christian Louboutin Trade mark No. 3869370 (France) and No. 008845539 (Filed in Europe) and No. 1352410 (Australia). 8 The Culture Trip, ‘How France Became the Fashion Capital of the World’, available at http://theculturetrip.com/europe/france/articles/how-france-became-the-fashion-capital-of-the-world/. 9 For example, the brands Billabong and Ripcurl have seen international success. 10 See http://www.abc.net.au/news/2016-08-08/online-pirates-ripping-off-australian-designs-from-instagram/7586664. 11 The legal status of unregistered (or common law) marks will be dealt with in an upcoming article related to passing off and unfair competition. 12 It should be also noted that both in Europe and Australia there are a number of other grounds of refusal or invalidation of trade marks, for instance marks that are misleading or deceptive and marks that are too close to existing registered, or unregistered, marks. These grounds are not considered in this article. 13 The EU institutions have adopted the ‘trade mark reform package’ in December 2015. Regulation EU N°2015/2424, modifying the Regulation N°207/2009, sets out rules applicable to EU trade marks. Most of its provisions came into force on 23 March 2016 and a few will enter into force only on 1 October 2017. Directive EU 2015/2436 further harmonizes the national trade mark systems of the EU Member States. It came into effect on 13 January 2016 but requires implementation by Member States into their own national laws. In this regard, the vast majority of changes needs to be implemented by 14 January 2019 at the latest but the provisions relating to the administrative invalidity/revocation proceedings need to be implemented by 14 January 2023. It is the most significant reform since the introduction of the Community trade mark system in 1988. 14 Although such exclusions were included in the Trade Marks Act 1994 (Cth) which never came into operation because it was hurriedly passed to meet TRIPS implementation deadlines. Effectively the 1995 Act directly supplanted the 1955 Act in operational terms. 15 Articles 3(1) of the Directive No. 2008/95/EC and 4(1) of the new Trade mark Directive 2015/2436. 16 Articles 7(1) of the Regulation No 207/2009/EC and of the new Trade mark Regulation 2015/95. 17 CJEU, 18 september 2014, ECLI:EU:C:2014:2233. Hauck GmbH & Co. KG c/ Stokke A/S et a, §39. 18 Ibid, § 23: ‘an interpretation of the first indent of that provision whereby that indent is to apply only to signs which consist exclusively of shapes which are indispensable to the function of the goods in question, leaving the producer of those goods no leeway to make a personal essential contribution, would not allow the objective of the ground for refusal set out therein to be fully realized.’ 19 In Mayne Industries Pty Ltd v Advanced Engineering Group Pty Ltd [2008] FCA 27 the registration for a sign in the shape of a ‘fence dropper’ was cancelled. 20 Cass. com., 30 May 2012, n°11-20724, SA Louboutin SARL c/ Zara France. 21 Ibid, ‘the shape appeared to be imposed by its nature or its function’. 22 French trade mark N° 11 3 860 024. 23 Paris District Court, 3e ch., 2e sect., 10 April 2015, N 13/11016. 24 CJEU 10 November 2016 Simba. 25 Trib. EU, 6 oct. 2011, aff. ECLI:EU:T:2011:575, Bang & Olufsen, Hauck GmbH & Co KG v Stokke A/S and others, Case ECLI:EU:C:2014:2233, EU:C:2014:2233, CJEU, 18 September 2014. 26 CJEU 20 September 2007, ECLI:EU:C:2007:542, Benetton Group SpA v G-Star International BV. 27 More specifically, the distinctive elements were listed as followed ‘sloping stitching from hip height to the crotch seam, kneepads, yoke on the seat of the trousers, horizontal stitching at knee height at the rear, band of a contrasting colour or of another material at the bottom of the trousers at the rear, all on one garment; seams, stitching and cuts on the kneepad of the trousers, slightly baggy kneepad.’ 28 As would be the case with any other kind of mark that could also have visual appeal, such as the three-stripe Adidas mark: see Adidas AG v Pacific Brands Footwear Pty Ltd (No 3) [2013] FCA 905. 29 Tribunal de Grande Instance (Paris District Court) 31 March 2016, N°15/03632. 30 Max-Planck Institute, 15 February 2011, available at ec.europa.eu/internal_market/indprop/docs/tm/20110308_allensbach-study_en.pdf, 72–4. 31 Mars Australia Pty Ltd (formerly Effem Foods Pty Ltd) v Société des Produits Nestlé SA [2010] FCA 639 (22 June 2010). 32 Trade mark No. 1365687 (Australia). 33 CJEU Case ECLI:EU:C:2004:88 Henkel v OHMI (bottle of detergent) § 52. 34 CJEU, ibid § 49. 35 GCEU, Bottega Veneta International Sarl v OHIM, 22 March 2013, ECLI:EU:T:2013:148. 36 CJEU, Louis Vuitton,15 May 2014, ECLI:EU:C:2014:324. ‘The line of authority that evolved in relation to three-dimensional trade marks consisting of the appearance of the product itself also applies where the trade mark applied for is a figurative mark consisting of the two-dimensional representation of that product. In such cases, the mark likewise does not consist of a sign independent of the appearance of the products it designates’ (§ 53). 37 TPIUE Louis Vuitton 21 April 2015, ECLI:EU:T:2015:215 and ECLI:EU:T:2015:214 § 23. 38 CJEU 15 May 2014, ECLI:EU:C:2014:324: has concluded of the lack of distinctiveness of the locking device for ‘spectacle cases’ in Class 9, the ‘jewel boxes in precious metals, their alloys or coated therewith’ in Class 14, or the ‘travel bags, travelling sets (leather goods), trunks and travelling bags, garment bags for travel, vanity cases, rucksacks, shoulder bags, handbags, attaché cases, document cases and briefcases of leather, pouches, wallets, purses, key cases, card cases’ in Class 18, and by contrast of the distinctiveness of the same locking device for ‘jewellery, including rings, keyrings, buckles and earrings, cuff links, bracelets, trinkets, brooches, necklaces, [tie] pins, ornaments, medallions; horological and chronometric instruments and apparatus, including watches, watchcases, alarm clocks’ in Class 14 and the ‘umbrellas’ in Class 18. 39 Cass Com [French Supreme Court] 6 January 2015 N°13-17108. The French Supreme Court held that the ‘I ♡ PARIS’ and ‘J’♡ PARIS’ do not allow distinguishing the origin of the covered souvenir products: the semantic content of this trade mark is viewed as a message of affection for a particular city. According to the Court, this lack of identification will lead a consumer to view the trade marks “I ♥ PARIS” and “J ♥ PARIS” as decorative signs and not as trade marks produced and marketed by the France Trading company. This case is considered as the first autonomous reference to the distinctive standard in French jurisprudence. 40 CJEU Voss of Norway supported by INTA, 7 May 2015, ECLI:EU:C:2015:303. 41 CJEU 15 May 2014, ECLI:EU:C:2014:324 the locking devices used on goods such as trunks, travelling bags, garment bags for travel, handbags etc, may take different forms but very frequently consist of two parts which lock into each other in various ways and of a device, such as a button or lever, to activate the unlocking mechanism. So far as the mark applied for has those characteristics. Therefore this mark consists of the typical image of a locking device for the abovementioned goods and is, therefore, devoid of any distinctive character as regards those goods. 42 CA Paris, 20 May 2011, n°10/10756. 43 GCEU, Bottega Veneta International Sarl v OHIM, 22 March 2013, ECLI:EU:T:2013:148. 44 CA Paris 27 January 2015 n°13/047001. 45 GCEU, Nestlé,15 December 2016, ECLI:EU:T:2016:735. 46 CJEU 24 May 2012 ECLI:EU:C:2012:307. 47 CA Paris 31 March 2015 n°13/23127. 48 Article 4(4) of the Directive 2015/2436. 49 CJUE, Levi Strauss, 18 April 2013, ECLI:EU:C:2013:253. 50 CJEU 20 September 2007, ECLI:EU:C:2007:415, Benetton Group SpA v. G-Star International BV. 51 For a decision where consistent application of a single color was not considered to have amounted to trade mark use of that colour, see Woolworths Limited v BP plc (No 2) [2006] FCAFC 132; see further below. 52 See Adidas AG v Pacific Brands Footwear Pty Ltd (No 3) [2013] FCA 905. Expert evidence indicated that consumers expected to see brands on shoes in the position between the laces and sole; thus the positioning of the Adidas three stripes was, by implication, trade mark use of that device. 53 Trib. UE, 19 sept. 2012, ECLI:EU:T:2012:440, V. Fraas GmbH v OHMI, § 74 et 75. 54 Paris Court of Appeal 14 December 2012 n°12/05245. 55 CGEU, 21 April 2015, ECLI:EU:T:2015:215, ECLI:EU:T:2015:214, Louis Vuitton Malletier v OHIM. 56 Specialty Fashion Group Limited v Alpargatas S.A. [2015] ATMO 100. 57 CJEU, Order of 11 September 2014, ECLI:EU:C:2014:2222. 58 GCEU 15 June 2010, ECLI:EU:T:2010:235. 59 GCEU 4 December 2015, ECLI:EU:T:2015:937. 60 CGEU, 15 December 2015 ECLI:EU:T:2015:937, ECLI:EU:T:2015:973. 61 GCEU 14 March 2014, ECLI:EU:T:2014:129. 62 CJUE, Levi Strauss, 18 April 2013, ECLI:EU:C:2013:253. 63 http://www.vogue.co.uk/article/remembering-richard-nicoll-with-dedicated-pantone-colour. 64 CJEU, 6 May 2003, ECLI:EU:C:2003:244. 65 Cass. com., 30 May 2012, n° 11-20724, SA Louboutin SARL v Zara France. 66 GCEU, 16 July 2015, ECLI:EU:T:2015:521: Louboutin won against an opposition to the registration of its EC red colour trade mark made by a company which previously registered a blue and red coloured trade mark on the sole of a shoe. 67 GCEU, 11 July 2013, ECLI:EU:T:2013:376, Think Schuhwerk. 68 Levi’s red rectangular label at the left upper edge of a pocket of trousers, shorts or skirts in CJUE, 18 April 2013, ECLI:EU:C:2013:253, Levi Strauss. 69 Trade markify, Australian Trade mark No. 1352410, see http://www.trade markify.com.au/trade mark/1352410?i=-Christian_LOUBOUTIN_1_rue_Volney_F_75002_PARIS_FRANCE#.VAkEdFzfJuY (accessed 10 August 2016). 70 C. Logan, ‘Louboutin Sees Rouge: Can other Traders Colour the Soles of Their Shoes Red?’ (2011) 24(3) Australian Intellectual Property Law Bulletin 75–6. 71 S 33(1): The Registrar must, after the examination, accept the application unless he or she is satisfied that […] (b) there are grounds under this Act for rejecting it. 72 Kenman Kandy Australia Pty Ltd v Registrar of Trade marks [2002] FCAFC 273. 73 In Adidas, a significant question was whether the diagonal striping features on the imitation shoes would be perceived as having a functional role (eg reinforcing the shoe, attached the straps, or improving playability): Adidas AG v Pacific Brands Footwear Pty Ltd (No 3) [2013] FCA 905 74 See Philmac Pty Limited v The Registrar of Trade marks [2002] FCA 1551. 75 Re BP PLC (2014) 107 IPR 637. 76 Re BP PLC (2014) 107 IPR 637 at 646. 77 Re BP PLC (2014) 107 IPR 637 at 647. 78 Cadbury UK Limited Trade mark No. 1120614 (Australia). 79 Koninklijke Philips Electronics NV v Remington Products Australia Pty Limited [2000] FCA 876. 80 CJEU 20 September 2007, ECLI:EU:C:2007:542, Benetton Group SpA v G-Star International BV. 81 Section 120 Trade Mark Act 1995 (Cth). 82 Directive 2008/95 [EC], Art. 5.1(a): ‘The registered trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade: (a) any sign which is identical with the trade mark in relation to goods or services which are identical with those for which the trade mark is registered.’ The same applies to EUTMs: Regulation 207/2009 [EC] of 26 February 2009, art. 9.1(a). The definition of the trade mark infringement remain the same in the new Directive [EU] 2015/2436 of 16 December 2015 which provisions have to be implemented in the legislation of the EU State members by 14 January 2019: art. 10.2(a). 83 Directive 2008/95 [EC], Art. 5.1(b): ‘The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade: (b) any sign where, because of its identity with, or similarity to, the trade mark and the identity or similarity of the goods or services covered by the trade mark and the sign, there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trade mark.’ The same applies to EUTMs: Regulation 207/2009 [EC] of 26 February 2009, art. 9.1(b). See also art. 10.2(b) of the new Directive [EU] 2015/2436 of 16 December 2015. 84 CJEU, 11 November 1997, ECLI:EU:C:1997:528, Sabel, para. 22. 85 GCEU, 20 April 2005, Faber, ECLI:EU:T:2005:135, para. 37. 86 CJEU, 11 November 1997, Sabel, ECLI:EU:C:1997:528, para. 22: ‘the appreciation of the likelihood of confusion “depends on numerous elements and, in particular, on the recognition of the trade mark on the market, of the association which can be made with the used or registered sign, of the degree of similarity between the trade mark and the sign and between the goods or services identified”. The likelihood of confusion must therefore be appreciated globally, taking into account all factors relevant to the circumstances of the case.’ French case law is in line with such definition of the ‘likelihood of confusion’: see Cass. com., 27 January 2009, no. 07-18-264. 87 CJEU, 22 June 1999, Lloyd, ECLI:EU:C:1999:323, para. 23. 88 CJEU, 18 July 2013, Specsavers, ECLI:EU:C:2013:497, paras 37–8. 89 ‘Should I Register My Trade Mark in Colour or Black and White?’, available at https://legalvision.com.au/should-i-register-my-trade-mark-in-colour/ (by Sophie Glover, 4 July 2017). 90 CA Paris, Pôle 5-1, 13 September 2016: RG 15/04749, Buob. 91 Cass. com., 8 February 2011, no. 09-13610: ‘Finding that Mr. X who did not contest that the mark “Kezako au moins c’est? pas du hasard” had not be exploited, was not demonstrating the existence of a likelihood of confusion in the consumer’s mind, the Court of appeal did not only noticed the absence of reputation of the mark “Kezako” legally motivated the decision.’ 92 ECLI:EU:C:2016:998, 21 December 2016, Länsförsäkringar: ‘Article 9(1)(b) of Council Regulation (EC) No 207/2009 of 26 February 2009 (…) must be interpreted as meaning that, during the period of five years following registration of an EU trade mark, its proprietor may, if there is a likelihood of confusion, prevent third parties from using in the course of trade a sign identical or similar to his mark in respect of all goods and services identical or similar to those for which that mark has been registered without having to demonstrate genuine use of that mark in respect of those goods or services.’ 93 ECLI:EU:C:2016:998, 21 December 2016, Länsförsäkringar, para. 26. 94 See recitals 30 to 32 of the Directive (EU) 2015/2436 of the 16 December 2015, in particular the recital 32: ‘a registered trade mark should only be protected in so far as it is actually used and a registered earlier trade mark should not enable its proprietor to oppose or invalidate a later trade mark if that proprietor has not put his trade mark to genuine use.’ 95 See above n 91. 96 At FCA [214]-[220]. 97 Further to Australian Law, the presence of intention to cause confusion assists in determining the risk of confusion: Australian Woollen Mills Ltd v FS Walton and Co Ltd [1937] HCA 51; (1937) 58 CLR 641 at 657–8: ‘The rule that if a mark or get-up for goods is adopted for the purpose of appropriating part of the trade or reputation of a rival, it should be presumed to be fitted for the purpose and therefore likely to deceive or confuse, no doubt, is as just in principle as it is wholesome in tendency’, Wingate Marketing Pty Ltd v Levi Strauss & Co [1994] FCA 1001; (1994) 49 FCR 89 at 129; Sydneywide Distributors Pty Ltd v Red Bull Australia Pty Ltd [2002] FCAFC 157; (2002) 55 IPR 354 at [45] and [117]–[121]; Campomar Sociedad, Limitada v Nike International Ltd [2000] HCA 12; (2000) 202 CLR 45 at [33]. 98 Based on an examination of the way the stripes were spaced on positioned on each alleged pair of shoes, it was found that some of them were not infringing Adidas trade mark, whether the stripes were not perfectly parallel, whether they were very close together. 99 GCEU, 5 July 2016, ECLI:EU:T:2016:389, Future Enterprise, para. 44. 100 Cass. com., 18 October 2016, no. 15-14523. 101 Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 (26 July 1963) and Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd [1999] FCA 816 (18 June 1999). 102 In Australia this was expressly confirmed in the Adidas case. 103 Adidas AG v Pacific Brands Footwear Pty Ltd (No 3) [2013] FCA 905 URL http://www.austlii.edu.au/cgi-bin/sinodisp/au/cases/cth/FCA/2013/905.html?stem=0&synonyms=0&query=title(adidas%20and%20pacific%20brands%20 (accessed 8 August 2016). 104 Pacific Brands highlighted the fact that Adidas shoes are for performance whereas Pacific Brands shoes were not for performance and were sold in lower cost stores with no customer service assistance. 105 Such solution of course also applies to the EU trade marks. 106 CJEU, 23 October 2003, ECLI:EU:C:2003:582, Adidas I. 107 Directive 2008/95 (EC), art. 5(2): ‘Any Member State may also provide that the proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade any sign which is identical with, or similar to, the trade mark in relation to goods or services which are not similar to those for which the trade mark is registered, where the latter has a reputation in the Member State and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.’ 108 CJEU, 10 April 2008, ECLI:EU:C:2008:217, Adidas II, para. 34. 109 Cass. com., 12 June 2012, no. 11-20132. 110 TGI Paris, 3rd ch., 1st sect., 14 April 2016: PIBD 2016, n°1052, III, p. 509: ‘The size of the head of tiger and its position on the sweater lead the public to perceive this sign, with respect to the practices of the sector, exclusively as a decoration and not as a guarantee of the commercial origin.’ 111 TGI Paris, 3rd ch., 1st sect., 14 April 2016: PIBD 2016, n°1051, III, p. 462: ‘The disputed sign shall therefore be perceived as being able to provide a guarantee of origin. It is indifferent that the sign simultaneously plays a decorative role. Indeed, the various actors of the sector usually affix their brands on the face of the tee-shirts to allow consumers identifying their commercial origin. Yet, the identity of the products and the great similarity of the signs generate a risk of confusion in the consumer’s mind.’ 112 Adidas AG v Pacific Brands Footwear Pty Ltd (No 3) [2013] FCA 905 at [86]. 113 TGI Paris, 16 December 2009: PIBD 2010, n°914, III, p. 184. 114 TGI Paris, 3 November 2009: PIBD 2010, n°912, III, p. 121. On the contrary, if the terms depicted on the face of the T-shirt are simultaneously reproduced on the labels of the garment, these terms are indisputably used as a trade mark: TGI Paris, 19 March 2009, Miss Pop. 115 See CA Douai, 17 March 2016: PIBD 2016, n°1048, III, p. 330; CA Paris, 28 November 2012: PIBD 2013, n°975, III, p. 865. 116 TGI Paris, 4 July 2014: PIBD 2014, n°1015, III, p. 817. 117 TGI Paris, 14 April 2016: PIBD 2016, n°1051, III, p. 462. 118 Top Heavy v Killin (1996) 34 IPR 382; the court noted that It was noted earlier in the decision that ‘questions of this sort arise where a word or phrase, claimed to be used as a trade mark, is capable of being read as descriptive of a characteristic, quality or function of the goods in relation to which it was used.’ © The Author(s) 2018. Published by Oxford University Press. All rights reserved.

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Journal of Intellectual Property Law & PracticeOxford University Press

Published: Mar 1, 2018

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