La suola dorata non può costituire marchio per scarpe (ancora sui marchi di posizione)

Jerome Tassi su Linkedin segnala la decisione 31 agosto 2023 EUIPO, domanda nà 018731419, istante: Yeshua Investment consulting, che dà esito opposto ai notissimi casi Louboutin

In breve dice ora l’ufficio che il pubblico non lo percepusce come segni di provenenzia aziendale

<<In the case at hand the sign is not distinguishable from the appearance of the
goods it designates, namely “metallic gold outer soles sold as an integral
component of men’s and women’s shoes”; it would only be distinctive for the
purposes of Article 7(1)(b) EUTMR if the consumer was able to recognize the
sign applied for as originating from a particular undertaking and thus to
distinguish the shoes of the applicant from those of other undertakings
(21/04/2010, T-7/09, ‘Spannfutter’, EU:T:2010:153, § 26) and, also, if it
departs significantly from the norm or customs of the sector. The benchmark
also applies to signs which are only applicable to a component or an element
of the appearance of the product, in the case at hand “Metallic gold outer
soles” (10/10/2008, T-387/06 to T-390/06, ‘Pallet’, EU:T:2008:427, § 36;
13/04/2011, T-202/09, ‘Footwear’, EU:T:2011:168, § 40; 19/09/2012, T-50/11,
‘Stoffmuster’, EU:T:2012:436, § 43).
· The sign consists of a metallic gold sole on footwear. It is clear from these
objective characteristics that the sign applied for aims to protect a coloured
surface in a particular position of the shoe. The sign merges in the eyes of the
relevant public with the claimed goods itself, i.e. shoes, since in the words of
the applicant the metallic gold outer soles are sold as an integral component
of men’s and women’s shoes.
· As to the gold colour of the sole, the public will not instantly perceive a single
colour, or a coloured element which forms part of the external appearance of
the goods as a reference to the commercial origin of the goods (21/10/2004,
C-447/02, ‘Orange’, EU:C:2004:649, § 78). Thus, while colours are capable of
conveying certain associations of ideas, and of arousing feelings, they
possess little inherent capacity for communicating specific information,
especially since they are commonly and widely used, because of their appeal,
in order to advertise and market goods or services, without any specific
message (06/05/2003, C-104/01, ‘Libertel’, EU:C:2003:244, § 40; 24/06/2004,
C-49/02, ‘Blau/Gelb’, EU:C:2004:384, § 38; 12/11/2008, T-400/07, ‘Farben in
Quadraten’, EU:T:2008:492, § 35).
· Furthermore, the use of the gold colour to highlight the quality of a given
product is a common place associated with high quality and excellence and,
therefore, does not confer distinctive character on the product>.

L’avvocato Tassi segnala l’opposto esito dato dall’ufficio alla suola rossa di Louboutin (dopo il via libera della corte giustizia 12.06.2018, C-163/16)