Trademark protection for the European shoe manufacturing industry

European clothing and shoe design are so tied to the region's cultural identity that they have been the subject of Hollywood movies such as "Personal Shopper," "Phantom Thread" and the upcoming "House of Gucci." Also, remember when Daniel Day-Lewis was an apprentice to master shoemaker Stefano Bremer for about a year?

On the other hand, the realities of the European footwear industry are not necessarily as glamorous as the silver screen would lead us to believe. Competition is incredibly fierce, making branding and trademark registration all the more critical. When it comes to shoes, Europe presents some intriguing Intellectual Property (IP) opportunities, but not without a few challenges along the way. Here, we will examine some of the difficulties European shoemakers face and how to avoid some common pitfalls.

Italian shoemakers can get in touch with the Dennemeyer & Associates office in Italy to receive counsel and assistance regarding all their trademark needs.

Shoe branding and manufacturing in Europe: key factors and challenges

According to Statista, the European shoe business is expected to generate about $137 billion in 2022. Leather- and textile-based footwear dominate the market, accounting for approximately $56.6 billion. In such a lucrative trade, brand owners need to put their best foot forward and take confident steps to safeguard their stake in the market. And pursuing trademark registration is one of the most practical measures.

Italy is the epicenter of European shoe manufacturing and was one of the world's biggest footwear producers for many years. However, the pandemic dealt the nation a particularly heavy blow — enough to knock it out of the top 10 shoe-manufacturing countries. Nevertheless, brands like Salvatore Ferragamo and Bruno Magli, together with lesser-known but more boutique companies including Enzo Bonafe and Bontoni, ensure the country is still popularly considered a world-class source of shoes. To many, these names still speak to the quality of the design, craftsmanship and service their bearers offer, and loudly at that.

In 2021, no European country was among the top 10 footwear manufacturers, even with Germany and Italy being the No. 3 and No. 8 exporters, respectively. Spain, France and Portugal are home to shoemakers as well-renowned as Italy's, but no EU member state was spared the economic hardships of COVID-19.

In these harsher times, European brands must do everything in their power to stand out, and strong trademarks can undoubtedly help. Even new branding avenues like social media do not have the same longstanding, emotive appeal as an eye-catching mark. With all these incentives, it is no wonder businesses want to do all they can to safeguard their IP, but companies that want to have their trademarks registered may find themselves facing distinctiveness obstacles.

The Adidas v Shoe Branding Europe brouhaha

To demonstrate the complications that must be faced to receive and maintain a European Union Trademark (EUTM), one need only recall the court battle between Adidas and Shoe Branding Europe. In 2019, Adidas could not convince the EU General Court that its "three stripes" logo, described as consisting of "three parallel equidistant stripes of identical width, applied on the product in any direction," should be a valid EUTM.

The decision by the General Court to confirm the mark's invalidity concluded a six-year saga that began when Adidas filed to register a new trademark in 2013. Not long after the registration was granted the following year, Belgian company Shoe Branding Europe BVBA initiated trademark invalidity proceedings with the European Union Intellectual Property Office (EUIPO), citing lack of distinctiveness as the primary grounds. EUIPO examiners revoked Adidas' registration shortly after that. Later challenges to the office's Board of Appeal met similar resistance, and the General Court ultimately drew a line under the rejection. In the end, Adidas failed to establish that the mark had acquired distinctive character through use in the EU — as required by European law. Indeed, much of the evidence Adidas had submitted was rejected on the grounds that it concerned other signs in which the color scheme was reversed.

Adidas is Germany-based and globally known, so its argument that the "three stripes" logo placed on its clothing, footwear and headgear had distinct recognition in the EU is not prima facie absurd. Nevertheless, because the altered version of the figurative mark was new, the EUIPO and the EU's highest court were not convinced that it had acquired distinctiveness.

These objections reaffirm how important it is to define a sturdy trademark filing strategy — always with a view to obtaining trademark protection that bears any and all scrutiny. It must always be remembered that the scope of a figurative mark cannot be extended to substantial variations even if they derive from a registered trademark.

Of course, from Shoe Branding Europe's point of view, the decision only highlights the necessity of fighting for a fair and level playing field. It takes four shoes to tango.

A fresh opportunity for trademark protection in Europe?

As we have seen, Italy lies at the heart of the European shoe industry, so, understandably, we can look to the country for innovative ways to protect IP. At first glance, Italy's "historical marks" (Marchio Storico) designation, which allows Italian companies to register as historical brands of national interest, seems like a model for other countries to follow. After all, many companies such as Benetton use such marks to bolster their domestic reputation and brand identity and even benefit from emergency funding provided in times of crisis.

There are, however, many stipulations and caveats to consider:

• Only companies with trademarks registered or continuously used in Italy for 50 years or more can register for a Marchio Storico.

• The mark does not create new IP rights; rather, it enhances traditional trademark protections.

• Even the financial protections offered were not enough to keep iconic jeans manufacturer Rifle from declaring bankruptcy.

• Many questions are still unanswered when it comes to the actual implementation of Italian historical marks. For example, does the mere registration of a historical mark prove market prominence or does the declaration of a historical link with a particular territory work against claims of extended EU reputation?

• Given the above, the measurable benefits to enterprises of historical marks are actually still indeterminate. Further regulations for the Marchio Storico designation and possible EU equivalents might help clarify these issues.

In the meantime, successfully registering a trademark remains the best strategy for shoe manufacturers whether they are based in Europe or simply operate in its markets. And if that trademark becomes widely recognized enough to avail of the enhanced protection that Italian and EU regulations reserve for registered reputed marks, all the better.

Trademarks are the best way for Europe's footwear industry to ensure a robust, competitive and creative market for now and for the future. And so shoe brands seeking trademark protection in Europe will need to think outside the box when designing their logos as fanciful marks of distinctive character have the best chances of EUIPO approval.

This article was first published on the CITMA website, November 16, 2021.