Following a legal dispute that has lasted 3 years, the Third Board of Appeal of the European Union Intellectual Property Office (“EUIPO”) has upheld the decision by the Cancellation Division and dismissed the appeal filed by Birkenstock Group B.V. & Co. KG (“Birkenstock”), upholding the ruling that the design of its sandals was null and void.
On 11 October 2019, Birkenstock applied for the registration of a Community trademark for sandals that were reminiscent of one of the German brands most iconic models, the “Arizona Big Buckle”. The application was registered and published in the Community Designs Bulletin on 22 October 2019. Two years later, on 2 November 2021, Balenciaga S.A.S (“Balenciaga”) filed an application for the design’s annulment, based on the fact that in March 2018, the company Next Plc (“Next”) had marketed a design that was practically identical to the design registered by Birkenstock in 2019. As evidence of this earlier product, it filed sections of an “Amazon” web page showing that sandals with a very similar design were being marketed on 1 March 2018.
Birkenstock argued that the material from which its sandal was made, along with its design and structure, differed significantly from the alleged earlier model. The main difference lay in the material and texture of the sandal’s fur which, according to Birkenstock, gave an overall impression that was very different in each of the products. As a consequence, the consumer would be perfectly capable of distinguishing between the two designs.
For its part, Balenciaga insisted that the Birkenstock design that it was challenging did not display sufficient individual characteristics to be regarded as an original design compared with the model marketed by Next in 2018. It argued that the most notable feature of both designs was that they were sandals covered in fur, and that the difference in the material used and the texture of this fur was a minor detail which did not, in itself, make the design individually distinctive.
The Cancellation Division found that the differences between the designs that Birkenstock had pointed out were not sufficient, and the design was annulled. Birkenstock appealed, but the EUIPO upheld the Cancellation Division’s decision. The EUIPO argued that, in the sandal market, designers have a great degree of freedom, given that they are only restricted by the fact that sandals have to be worn on the feet, and that they have to be put on and taken off, and that they must not come loose when worn. All other features can be designed in complete freedom.
This wide ranging freedom means, according to the EUIPO, that for a design to give the general impression of being a distinct product, any differences in design must go beyond a difference in the materials in which the sandal is covered. In other words, the greater the freedom of the designer, the greater must be the differences that will allow the product to be regarded as a new and original design.
