When is making the first move the best defence?
9 May 2022
After a few attempts, a competitor has finally managed to get the famous Moon Boot’s 3-D European Union Trade Mark (EUTM) No. 10168441 cancelled. Read on to hear how they did it.
On 20 March 2012, Tecnica Group SpA’s 3-D EUTM application for protection of the Moon Boots was registered under No. 10168441 for Classes 18, 20 and 25.
In November 2016, the District Court of Venice issued a decision on an action brought by Zeitneu GmbH, one of Tecnica Group’s competitors. The action sought to obtain a declaration of non-infringement but was dismissed on the grounds that there was a likelihood of confusion between the Moon Boot’s 3-D mark and the footwear collections manufactured by the plaintiff. This finding was confirmed by the Court of Appeal of Venice.
Not happy with the outcome, Zeitneu GmbH filed an application at the EUIPO for a declaration that the Moon Boot’s 3-D mark was invalid in respect of all of the goods applied for, arguing that the mark lacked distinctiveness.
The T-483/20 decision by the General Court of the European Union on 19 January 2022 maintained previous decisions by both the Cancellation Division and Board of Appeal’s decisions and ruled that the overall impression conveyed by the mark does not depart significantly from the norms or customs of the sector, declaring the Moon Boot’s 3-D mark invalid.
The ruling confirmed that the presence on the market of a number of products from third parties that are identical or similar to the contested sign is irrelevant to the assessment of the inherent distinctiveness of the contested mark and confirms that the shape of the mark corresponds to the common shape of after-ski boots.
One of best chances of success for the Moon Boot’s trade mark protection would have been proving acquired distinctiveness, for example by pointing to the fact that Italian Courts have, on more than one occasion, found that the Moon Boot design is deserving of copyright protection. However, the General Court’s decision declared that the claim for acquired distinctiveness was inadmissible because it was not raised before the Cancellation Division or before the Board of Appeal and that it could not therefore be subject matter of the proceedings before the General Court.
While there might still be alternative means to seek protection against counterfeit of Moon Boots at a national level, the loss of protection of the Moon Boot design as a valid trade mark for footwear on a European level is now irreversible. This highlights the importance of bringing all arguments and evidence forward as soon as possible on invalidity proceedings before the EUIPO to avoid having your arguments, claims and evidence deemed not timely filed.
Trade Mark Group
© Withers & Rogers LLP May 2022
