Position marks for decorative elements on footwear tend to be refused due to a lack of distinctiveness (art. 7 (1)(b) of the EUTMR). Reason: the average consumer will see the applied for position mark simply as a banal/ordinary decorative element and will not perceive it as a sign of the commercial origin of the shoe. In general, acquired distinctiveness must be proven before such position mark is registered. This ‘rule’ received lots of criticism, as there may be many signs that may well serve as a trademark from the very start of its use. A decisive criterion is whether the sign is distinguishable from the appearance of the product (ECJ 2018, Birkenstock. 

Now here is some good news for sneaker brands: the EUIPO Board of Appeal (BoA) has deemed this position mark valid (in Spanish):

This combination of geometric elements (a compass-shaped chevron facing to the right with a considerable straight line in the horizontal plane) makes the sign sufficiently complex. This is not a simple and banal geometric shape. The consumer perceives this mark not as a mere decorative, ornamental or functional element, considering its location, characteristics and dimensions. Hence this sign is deemed sufficiently memorable for the purposes of performing its function as an indicator of commercial origin. Therefore the sign is deemed independent from the product.

The applicant filed ample evidence showing that footwear manufacturers commonly use a specific sign on their products (lines, stripes, geometric shapes or a combination), in the same place on the outside of the product, so that it can be seen from a distance. Just think of VANS, Asics, Reebok, K-Shoes, adidas, Veja and so on. The average shoe consumer is accustomed to this type of position marks and, in principle, can be guided by them when purchasing sneakers.

Although a sign located this specific position will not automatically be perceived as a trade mark, the fact that the sneaker consumer knows that manufacturers usually place their distinctive signs on that specific area of the sneaker, is the reason why this mark is deemed valid from the start by the BoA. 

Maarten Haak