CABINET CHAILLOT

Invalidity of Birkenstock’s Community design for shoes

Balenciaga filed an application for a declaration of invalidity of Birkenstock’s Community design filed in 2019 for lack of individual character with regard to prior sandals available on Amazon website since March 2018.

The Board of Appeal of EUIPO confirmed invalidity.

The extracts from amazon.fr indicate that the product with the Amazon Standard Identification Number (ASIN) has been offered since 01/03/2018, before filing date of the Community design.

The freedom of the designer is taken into account and is considered as high for shoes. Restriction only arises from the fact that the shoe is worn on the foot and must not be lost when it is worn.

Birkenstock did not submit any evidence that the state of the art in the field of sandals was to be regarded as saturated, nor has it submitted any evidence that such a saturation could influence the perception of the informed user.

The informed user is taken into account for appreciating the individual character of the design. Without being an expert or manufacturer, the informed user is a person who knows the sandals which were available on the market before the filing date of the contested design, mainly on the basis of his/her own experience or his/her own interest in these products.

The Board has noted the differences between the designs, in particular in the fur structure of the sandals: the fur in the design is more lighter than that in prior sandals, which has a smooth and therefore somewhat longer effect. Furthermore, the buckles in the design applied to the straps are very dark, in contrast to the light fur, while the contrast between these two features in prior design is smaller due to the golden buckles.

Nevertheless, the designs essentially have the same appearance. Both designs create the overall impression, which is essentially produced by the very similar, sophisticated artificial fur of the upper shoe and the cover.  

As indicated, the freedom of the designer is only marginally restricted. The greater the freedom of the designer, the less likely differences will be to produce a different overall impression.

The design is therefore invalidated

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