A signature element of the Dr. Martens boots is the yellow stitching on the edge of the sole. Airwair, the business behind the shoe brand, registered this specific yellow stitching as a position mark in an effort to prevent itself against copycats. Position mark consists of a specific way in which a mark is placed or affixed on certain goods. In this case, this position mark is referred to by the company as the yellow-stitch-on-black-welt trademark (hereinafter: YSBW-trademark).
When Van Haren, a Dutch shoe brand, launched a shoe with a similar type of stitching, Airwair filed a lawsuit. However, Van Haren held the view that the trademark registration was invalid, and tried to cancel the trademark. On April 8th 2022, the Benelux Office for Intellectual Property (hereinafter: the Office) ruled its decision on this application for cancellation.
Grounds for invalidation
Van Haren is of the opinion that the YSBW-trademark is unable to fulfill the essential function of a trademark and should therefore be declared invalid on various legal grounds.
First of all, the YSBW-trademark is devoid of any inherent distinctive character and is therefore uncapable of acquiring distinctiveness through use. Van Haren also states that the sign has become customary in the established practices of trade. This particular ground applies to trademarks that were distinctive previously, but have become a customary indication for the goods concerned at the time of filing. The third and last ground invoked, is that the contested trademark consists exclusively of a characteristic which (i) results from the nature of the goods, (ii) is necessary to obtain a technical result or (iii) gives substantial value to the goods. Van Haren stresses that trademarks which fall within one of these sub-grounds are excluded from trademark protection, which means that possible acquired distinctiveness would become irrelevant.
Decision of the Benelux Office
The Office ruled the application for cancellation to be unjustified, as none of the grounds could lead to invalidation. Hence, the Benelux trademark registration of Airwair is upheld.
The first two grounds set forth by Van Haren are examined collectively, as they both are set aside if a trademark has acquired distinctiveness. The Office considers that Airwair has provided sufficient evidence that the contested trademark has acquired distinctiveness. For decades, the YSBW-trademark on the Dr. Martens boots has had a strong presence within the Benelux market. A large number of press articles submitted by Airwair illustrate that the yellow stitching is widely recognized. Furthermore, the status attributed to the stitching in these publications demonstrates that the stitching is being considered as a sign that the boots originate from the Airwair company. The fact there are slightly different outcomes in market surveys submitted by the parties regarding this distinctiveness, does not alter the view of the Office.
With respect to the third ground, the Office considered that sub-grounds (i) and (ii) amount to the argument that the trademark is functional, as the welt and stitching enables the upper of the lace boot to be firmly connected to the sole. However, the Office came to the conclusion that van Haren failed to substantiate why the yellow stitching (specified in color Pantone 3965 XGC) on a black welt (specified Pantone 19-3909 TCX) results from the nature of the goods or is necessary to obtain a technical result. With regard to sub-ground (iii), Van Haren argues that the appearance of a shoe forms a decisive and important part in the purchase decision. Notably, the look of the Dr. Martens lace boot will be the primary consideration for buying the shoes, which includes the YSBW-trademark. The Office realizes that the visual appearance of the Dr. Martens boot will undoubtably play an important role in the (potential) purchase decision of consumers. However, the trademark is a position mark and it consists of well-defined elements. Hence, the claimant fails to substantiate why this yellow stitching would intrinsically, so without taking into consideration the attraction acquired through trademark use, be attractive to such an extent that it must be considered to give substantial value to the goods.
Take away points
Even though Airwair drew the long straw in this instance, it is rather challenging to acquire a sufficient level of distinctiveness in order to file a valid position mark. As emphasized by the Office, these normally non-distinctive elements can only gain enough distinctiveness through long and intensive use, extensive marketing and efforts to promote a certain trademark. This is something one definitely should bear in mind when filing an application for a position mark.
If you are seeking to register your trademark for legal protection in either the Benelux or the European Union, please do not hesitate to contact us at kuiper@bg.legal. We can help with our knowledge and experience within the field of IP.
