After a 5 year-long battle to defend the registration of the famed footwear 'Moon Boot', the EU General Court has upheld the previous finding and rejected the validity of the 3D trade mark.

The battle started when Tecnica Group, the owner of the Moon Boot, brought a successful trade mark infringement action against Zeitneu GmbH with the Tribunale di Venezia in Italy. Zeitneu GmbH retaliated and initiated proceedings before the EUIPO to invalidate Tecnica's 3D trade mark for non-distinctiveness, arguing that the shape of the boot was not different from other ski boots on the market such that consumers viewed the product as a generic style of boot instead of an indicator of origin. The EUIPO agreed with Zeitneu and invalidated the mark for use in Class 25 including footwear.

On its first appeal, Tecnica failed to argue that its boot shape departed from the norm and customs of the sector. When Tecnica brought an action to the EU General Court, it again failed to persuade the General Court that its 3D trade mark was distinctive. The General Court held that "the shape of the contested mark corresponds to the common shape of after-ski boots, which generally consist of a high shaft, often in a light synthetic material, with soles and laces".

Therefore, the General Courts decision is that the mark is devoid of the necessary distinctive character and shall be removed from the Register.

Shape marks are notoriously difficult to protect and maintain as the requirements of a shape mark is more than for word or figurative trade marks. A shape mark must be distinctive, must not result from the nature of the goods themselves and must not be necessary to obtain technical result. Although you can claim acquired distinctiveness, as this case demonstrates, shape marks which represent a 'typical' good may become customary over time and could lose registered trade mark protection. Therefore, it is vital that you prevent confusingly similar third party use to ensure your shape does not become generic over time.

Also, it is always worth exploring whether copyright or design protection is available to strengthen your brand and product. In this regard, it is interesting to note that Italian courts have previously found that the iconic ski footwear is deserving of copyright protection – I agree with this finding – highlighting that trade mark and copyright protection are not always harmonious.