Vans, Inc. v OHIM – waving goodbye to registration

Action sports brand, Vans, has failed again in its attempt to register a logo as a trade mark.

Vans first attempted to register its wavy line logo, which it regularly uses on clothing, footwear and accessories, in September 2011:

Last month its appeal against the refusal by OHIM (the European Community Trade Marks Registry) of its trade mark application was dismissed.

Why? Vans either needed to show that the mark was inherently distinctive, or that it had acquired distinctiveness over time.  Despite putting forward many arguments, both the initial examiner of the mark and the Appeal Board refused to grant the monopoly right.

What went wrong?

Trade marks need to enable consumers to identify the origin of goods.  They should convey a message or stick in the consumer’s mind in some way.  Vans failed to demonstrate that its mark does this because:

1. Trade marks must do more than decorate. They are a badge of origin.  Given the simplicity of Vans’ mark, the court concluded that consumers were likely to perceive it as a pattern or decoration, rather than an indicator of origin. Vans was not helped by the fact that fashion items are often decorated with stripes, lines and graphics (and despite the fact that some of these are registered as trade marks).
    
2. In considering the consumer’s perception of the mark, the court stated that people do not over-analyse branding on clothing. The court considered that people were unlikely to remember the precise shape of the mark.  A person might vaguely remember the shape of a wavy line, but this was not enough to prove distinctiveness.

If Vans had shown that the mark had, over time, acquired distinctiveness it may have been successful.  Vans produced sales figures, statistics from its social networking sites, and promotional materials in its attempt to demonstrate the brand’s reputation throughout Europe.  But, fatally, all of the evidence was provided from within the company.  No independent sources were used to verify the facts.  Ultimately, the court was not persuaded that a significant proportion of the general public would identify the mark as representing Vans, and the decision to refuse registration was upheld.

What can we learn from this?

1.    Create a distinctive logo

Many brands do not consider what difficulties they might face in trying to protect their intellectual property rights.  The decision in Vans suggests that the threshold for proving distinctiveness of a trade mark in the fashion sector is higher than in others.  Fashion items are inherently decorative and consumers are perceived as paying a low level of attention to branding.  The more distinctive the mark, the more valuable it will be.

2.    Develop a marketing strategy

A well thought out marketing strategy can significantly increase a brand’s reputation.  Brands should seek advice to create long-term plans to educate the public.  When faced with the task of proving distinctiveness, a lot of the hard work will already have been done.  Market surveys can also be useful when demonstrating consumer awareness.