On 8 December 2005, K-Swiss Inc. filed an application for a Community Trademark as depicted alongside, for ‘footwear’. The European Trademark Office (Office for Harmonisation in the Internal Market, also known as OHIM) accepted the application and the mark was registered in August of 2007. However, in 2009, Künzli SwissSchuh AG filed an application of invalidity. The Cancellation Division granted this application, observing, among others, that the specific form of the five stripes could not be an indication of the commercial origin of the products concerned, since there was no ‘adequate point of contact’.
K-Swiss appealed the decision of the Cancellation Division, but found that the Second Board of Appeal confirmed the decision. One of the arguments of the Board for not finding that the mark could function as a trademark was the fact that ‘average consumers are not in the habit of making assumptions as to the commercial origin of products on the basis of signs which are indistinguishable from the appearance of the goods themselves, whether those signs are figurative, three-dimensional or other, such signs are distinctive only if they depart significantly from the norms or customs of the sector’.
K-Swiss then went to the General Court of the EU, but found the decision confirmed once again. The General Court considered it ‘to be appropriate to examine whether the mark at issue is indistinguishable from the appearance of the product designated or whether it, on the contrary, is independent of it.’ The Court found that the sign at issue should be independent of the appearance of the product in order not to be perceived as a merely decorative element.
The Court considered this not to be the case with the five stripes and considered that the five stripes are not capable of identifying the commercial origin of the goods, meaning that K-Swiss loses its trademark rights.