Landmark decision of the General Court of the European Union in sports shoe position marks

GUELL IP successfully represented MUNICH S.L. in complex court proceedings concerning the distinctiveness of MUNICH’s position mark.

The German company DEICHMANN SE had applied for a declaration of invalidity of the position mark for lack of distinctiveness on the grounds that it was too simple and therefore could not function as a trademark. In addition, it argued that other companies in the sector had previously used marks consisting of two crossed stripes on the side of a sports shoe, and that there were registered designs with similar shapes.

The case ended up before the General Court in Luxembourg, which upheld all of MUNICH S.L.’s arguments and concluded that the mark is distinctive per se. Regarding the use by third parties and the registration of similar designs, the Court concludes that the fact that a given manufacturer has marketed footwear with various types of crossed-stripes on the side of the shoe, or even that designs with cross-stripes on the side of a sports shoe have been registered, is not sufficient per se to consider the mark to be devoid of distinctive character in relation to sports footwear.

The decision is available here.