Edward Green and Company Limited, a manufacturer of high end shoes since 1890, filed a UK trade mark application in class 25 for various types of shoes for the above mark.
It was accompanied by the description:
The mark consists of the arrangement of nail heads in groups on the underside of a left shoe heel and the underside of a right shoe heel around a part of the perimeter thereof, as shown in the representations.
The examiner objected to this application under Section 3(1)(b) of the Trade Mark Act 1994. He stated that:
"the mark is devoid of any distinctive character. This is because the mark representation consists of the non-distinctive arrangement of nails presented on the underside of a heel. The average customer would fail to note any single origin of trade when presented with such a representation on the goods claimed."
At a hearing, the applicant argued that:
The applicant's evidence provided information about the manufacturing process of Goodyear Welted shoes and their price, positioning them at the top end of the footwear market.
The examiner maintained her objection, and was asked to give the full rationale of her decision.
Looking at the nature of the relevant public, the examiner stated that the goods were not highly specialised items. Even though they were handmade and highly expensive, that did not necessarily imply that the consumer would have specialist knowledge. The same reasoning would have applied even if the applicant had written instead "Goodyear Welted shoes" in its specification.
Applying Henkel, which stated that consumers were not in the habit of making assumptions about the origin of products on the basis of their shape only and thus that it could prove more difficult to establish distinctiveness in relation to such 3D marks, the examiner deemed that the nail head pattern did not possess any particular distinctive feature to other nail patterns. It consisted of a simplistic arrangement of nails on the heel, and in her opinion, consumers would regard that arrangement as mere decoration. She quoted a EUIPO judgement for a similar trade mark application by Edward Green filed more 10 years earlier (R437/2007-4) where such a sign was deemed to be "merely a variation on a common theme".
Thus, the mark was not capable of distinguishing the goods of the applicant from those of other traders.
The examiner then addressed the claim of acquired distinctiveness. The evidence submitted to her showed that the pattern had been used since the early 1980s. There were also examples of in-store displays and a discussion from an online forum that included a comparison of manufacturers' nail patterns. The applicant also showed that its yearly turnover for substantial and had increased from £5.2m in 2012 to £6.6m in 2016, with approximately 15,400 pairs of shoes sold per year.
The senior VP of footwear design also stated that no other Edward Green branding other than the nail pattern was present on the shoes.
The examiner underlined that mere evidence of use, even if substantial, was not automatically enough to prove acquire distinctiveness. Furthermore, if a mark's status as being descriptive or distinctive was ambiguous, it would not comply with the legal requirements. Finally, to acquire distinctiveness, the sign in question must have been used as a trade mark (with guidance provided by Philips v Remington C-2999/99). Reliance by the consumer on the sign was essential (VIBE – O/166/08) and as stated by the Court of Appeal, it had to be proven by the evidence that the sign itself denoted trade origin, not by borrowing the reputation of an trade mark that it was associated with (KIT KAT  EWCA Civ 358).
Based on the evidence provided, it could not be automatically assumed that consumers were more alert to details of the shoe such as the nail pattern due to the high price of the product. The evidence relied heavily on posts from online forums. The comments showed that the consumer did not clearly rely on solely on the nail pattern but also on other details like the heel shape, serial number or stitching.
The examples of use of the sign by the applicant included no reference or inference that it was actually used as a trade mark; the fact that online shoe sellers sometimes showed the sole of the product was simply to provide as much information to consumers as possible.
Additionally, it was noted that there had been no evidence of marketing activities (the applicant relying mainly on word-of-mouth to attract consumers) that informed consumers that the nail pattern was an indication of origin.
Finally, the opinion of experts provided by the applicant carried relatively little weight – an expert's level of knowledge was not the same as that of an end consumer.
No acquired distinctiveness had been demonstrated.
That case not only reinforces the difficulty to obtain registration for 3D shapes. It also illustrates the importance of providing clear evidence which does not require any assumption to be made on the part of the examiner in order to support the claim of acquired distinctiveness. It must be explicit.
Case Ref: O-563-18