Companies are increasingly trying to look beyond traditional trademarks and attempt the registration of their most characteristic packaging and products as 3D trademarks, from chocolate bars to batteries. Trademark rights have many advantages over other forms of IP, as they are especially robust and easy to enforce, as well as being renewable every ten years potentially forever. However, not every product can become a trademark , as we have seen in the recent case of "Moon Boot".
The Italian society Tecnica Spa, owner of the iconic apres-ski boots that resemble those of astronauts (hence its name), registered them as a 3D mark in 2011 before the European Union Intellectual Property Office (EUIPO).
Swiss competitor Zeitneu started an invalidation procedure against the trademark which culminated in a decision of May 18, 2020 of the EUIPO's First Board of Appeal confirming that the boot is not distinctive enough.
First, it was considered that the shape of the boot is the usual "L" shape necessary to conform to the foot. Neither the laces nor other details make it distinctive enough. Additionally, in the 40 years between the initial launch of the boot and its registration as a trademark, many similar products have appeared in the market.
Secondly, the fashion industry is considered to be a market characterized by the originality of the shapes and their decorative elements, which are appreciated for their aesthetic beauty. However, this does not normally fulfill the function of indicating the commercial origin of the products themselves. An important distinction is made here that reminds us once again that the function of the trademark framework is not to assist companies to arbitrarily appropriate shapes and colors, but to inform consumers of the origin of a product.
Although this will undoubtedly be a blow to Tecnica, the Italian footwear brand has many options to continue protecting its flagship product. According to the recent European decisions Cofemel and Brompton, it is very likely that the copyright on the original boots will be easily acknowledged and enforced.
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