EUIPO Rejects Thom Browne’s Four-Stripe Design Mark as Decorative, Not Distinctive

The refusal — based on Article 7(1)(b) of the EU Trademark Regulation (EUTMR) — makes clear that companies will continue facing challenges when securing protection for design elements that could be deemed decorative.

Background

Thom Browne, Inc. filed EU Application No. 018980277 for the below four-stripe design mark as a position mark (i.e., a mark that is placed on or affixed to a product in a specific way) consisting of four horizontal parallel stripes or bands positioned on the upper part of the left sleeve of an article of clothing/garment.

On March 25, the EUIPO refused to register Thom Browne’s application on the grounds that the four-stripe design lacks distinctiveness and therefore does not function as a trademark (i.e., an identifier of the source of goods/services) but rather serves as a merely decorative element in relation to the applied-for goods.[1]

The EUIPO’s decision is akin to an “ornamental” refusal in the United States, which occurs when an applied-for mark is merely decorative and not distinctive in that it does not identify and distinguish the applicant’s goods/services. Generally, a decorative/ornamental refusal may occur when the applied-for mark features a commonplace or simple shape or design element that consumers would not readily identify as a trademark. Typical examples might include basic geometric shapes or patterns printed on the surface of a product, such as an article of clothing, a blanket, or a towel. The location or positioning of the design on the product as well as the size of the design relative to the overall size of the product can be important factors in determining whether a mark is merely decorative/ornamental.

Ornamental refusals can be overturned when the applicant demonstrates the mark has acquired distinctiveness. (This applies when the mark at issue is not inherently distinctive.) There are nuanced differences between how acquired distinctiveness can be demonstrated in the United States versus the EU. However, generally, acquired distinctiveness can be demonstrated through extensive use of the mark coupled with ample evidence (e.g., customer and/or market surveys, affidavits, sales figures, and/or advertising expenditures) showing consumers recognize the applied-for mark functions as a trademark.

• In the United States, claiming substantially exclusive and continuous use of a mark for at least five years is one way to argue a mark has acquired distinctiveness; provided that such claim is supported by an affidavit or declaration signed by an individual with firsthand knowledge of the relevant facts.[2] However, with ornamental refusals, five years’ use alone is typically insufficient and “[c]oncrete evidence that the proposed mark is perceived as a mark for the relevant goods or services is required to establish distinctiveness.”[3]

• According to applicable rules for the EUIPO, the applicant must provide “clear and convincing” evidence that the applied-for mark has acquired distinctiveness through use by “creat[ing] a link in the mind of the relevant public with the goods or services provided by a specific company, despite the fact that, in the absence of such use, the [mark] at issue would lack the necessary distinctiveness to create such a link.”[4] To that end, “the evidence should show that a significant proportion of the public perceives the mark as identifying specific goods or services as originating from a particular undertaking.”[5]

For Thom Browne, the EUIPO determined that the mark does not function as a trademark because the position of the four-stripe design on the sleeve of an article of clothing (such as t-shirts) is a commonly found ornament or decoration in the trade or marketplace and therefore lacks distinctiveness. As support, the EUIPO relied on many results, including numerous third-party competitors of Thom Browne, when conducting an online search of the term “four bars shirts.” The EUIPO further found that Thom Browne failed to provide any evidence showing the mark has acquired distinctiveness through use. Accordingly, the EUIPO issued its decision maintaining the rejection of the application.

Thom Browne has appealed the decision and will therefore have another opportunity to submit additional evidence to show that its four-stripe design is distinctive and/or has acquired distinctiveness.

Future Implications

The Thom Browne decision makes clear that brands aiming to protect subtle visual elements — like stripes, shapes, or design placements — must demonstrate their distinctiveness, particularly when registering them as position marks. Simply using the design in commerce or possessing online visibility is not enough. Applicants must instead prove that consumers identify the design as source-identifying feature, not just a decorative one.