This is about trademarks: Shoelace tips are the last 2 cm of shoelaces, i.e. shoelace ends. Think Schuhwerk, a shoe manufacturer in Austria, thought that the market can distinguish its shoes from those of other manufacturers by the shoelace tips – although we are talking about special shoelace tips here. The EU General Court was sceptical in this case but more rigorous with respect to two trademarks that were relatively different, except that both used the words “süzme peynir”, which means something like “sieved cheese” in Turkish (in Germany and also in Austria, this would probably be referred to as “cottage cheese”). The Court found that nobody here would understand this, which it why it saw a likelihood of confusion in this case and rejected the trademark of one company in response to the objection of the first one.

Trademark law is often difficult to understand, but it is very illustrative. This is also true with two decisions of the General Court of the European Union (GC) we will briefly present here.

The first decision concerns an attempt of an Austrian shoe shop to have its shoelace tips, which are indeed different because they are Pompei red, registered as a trademark. Counsel for the shop stated that the market perceived the eye-catching red (specifically Pompei red) laces as a trademark, namely as an indication that shoes with this kind of laces come from one particular manufacturer and not from another. Just like the EUIPO where the trademark had been filed as a Community trade mark, the Court held that it was an original and good idea to give the laces red colour at the ends. However, since the laces are still part of the shoe, this is not sufficient. The GC used somewhat more refined words, saying that the sign in respect of which a trademark was filed, i.e. the red end of the shoelace, practically blends into the item, i.e. the shoe. But ultimately this still does not make it a trademark. In such a blend, the sign that is to be regarded as a trademark must be significantly different from the basic forms of the product that are commercially available and not just a nice new variation of the existing form. Apparently, shoelace tips that are set off from the rest of the shoe lace do exist, possibly also in a different colour, but not in Pompei red. In the view of the Court, this is not sufficient. Although this is a sign, i.e. not just a part of the shoe, it lacks the requisite distinctive character to be registered as a trademark. The Court did not even look into the question of whether there is a demand in the market for using red shoelace tips at all – even if they are not precisely Pompei red. If the applicant had been granted a trademark right, this would have had the consequence that the applicant would have been able to prohibit identical and even similar shoelace tips. However, this was not the point because the EUIPO already found that the sign “lacked distinctive character”, i.e. was not capable of indicating that the product originates from a particular manufacturer.  In my opinion, this decision is right and wrong at the same time. It is wrong because these red shoelace tips are indeed an indication of the origin of the product. It is right because it does not make sense to give one shoe manufacturer the right to prohibit other manufacturers from using coloured shoelace tips, even if they are Pompei red. However, the EU Trademark Regulation does not really contain a provision to this effect.

In the second case, which is a very common scenario and similar to many others, two Turkish grocery manufacturers were in dispute over trademarks which were identical only in one merely descriptive element, namely in that they contained the words “süzme peynir”. As mentioned above, this means something like “sieved/filtered cheese” and would probably be referred to as “cottage cheese” in Germany. A company objected to the registration of a trademark which included the additional element “Pinar” and showed a sliced piece of Süzme Peynir based on its trademark, which showed two cows standing below the Turkish words for this kind of cottage cheese. If the writing had been “Cottage Cheese” instead of “Süzme Peynir”, the case would probably have had a different outcome. However, although there is more of Turkey in Europe than the UK is part of the EU, Turkish is not a language spoken in the EU, or at least not everyone buying this kind of cheese speaks Turkish. Who these buyers are was a matter of heated debate between the parties. The applicant said that only Turks or people speaking Turkish buy it, i.e. people who understand exactly that not “Süzme Peynir” but “Pinar” is the trademark, while the objector said it is bought by everyone, which is probably the more valid view. Those who do not speak Turkish may indeed think that “Süzme Peynir” is quite an original trademark and believe that this kind of cheese is made only by one manufacturer. The Court took the same view: the cows and the images of cheese did not matter, “Pinar” could also mean something different, e.g. it could be the principal trademark of the applicant – which it is indeed –, in which case “Süzme Peynir” is the secondary trademark (and thus the actual trademark in relation to other trademarks) which is identical to the attacking trademark in its decisive element. There is therefore a likelihood of confusion and the application had to be dismissed.

(GC, judgment of 17 November 2021, T 298/19 – Think Schuhwerk GmbH and Judgment of 20 October 2021, T-560-20 – Yades International GmbH)