By Gaurav Bhalla of Ahlawat & Associates

The Bombay High Court recently affirmed the order of the Registrar of Trade Marks whereby TikTok’s application for declaration of its mark as well-known in India was disallowed. Interestingly, this decision (by the Bombay High Court) was not on merits but rather had a heavy influence of sovereignty and integrity of India, its defence and public order. This judgment might serve a message to trademark owners of global digital products to be cautious of the manner of operating their products in India.

TikTok was launched in India in 2017 and became an instant hit with its unique algorithm which offered tailored and engaging short-form content to users. TikTok also obtained a trademark registration further strengthening its trademark rights in India. Subsequently, it filed an application for declaration of its mark as well-known as per the procedure laid down under the Trade Marks Rules, 2017. Interestingly, while the application (for declaration of the mark as well-known) was being examined, TikTok was banned in India (in 2020) citing national security concerns (owing to allegations of data privacy owing to its servers located outside India, circulation of inappropriate content, etc.).

The Registrar of Trade Marks, while adjudicating the application (for declaration of the mark as well-known) declined to grant ‘well-known’ status to the mark TikTok with the rationale that a brand (the product under which is currently prohibited in India) did not align with the criteria for such recognition.

TikTok subsequently knocked the doors of the Bombay High Court by filing an appeal against the order of the Trade Marks registry. TikTok argued that the Registrar’s decision overlooked extensive evidence of its global recognition and popularity. They submitted that the matter be reconsidered with a fresh perspective, and that the ban in India should not negatively affect the brand’s strengthening of its trademark rights.

The primarily question before the Court was whether a trademark of a banned product (mobile application) could qualify as ‘well-known’? The Court referred to Section 11(6) of the Indian Trade Marks Act and mentioned that while the provision lists out some aspects which could be considered while analyzing whether or not a mark is well-known or not, the list under the provision is illustrative and non-exhaustive. The Court also expressly observed that Section 11(6) gives power to the Registrar to take into consideration any fact that he considers relevant for determining a trade mark as a well-known trade mark.

The Court finally observed that “The reasons why the application of the petitioner bearing the trade mark TikTok has been banned pertain to the sovereignty and integrity of India, its Defence and Public Order. These are serious matters, which cannot be ignored and therefore, it is found that the respondent did take into consideration relevant factors while passing the impugned order.” Accordingly, the Court upheld the order of the Trade Marks registry and concluded that TikTok couldn’t be recognized as a well-known mark in India.

It remains to be seen whether TikTok will file an appeal against this judgment. This is one of the rare scenarios where the Court instead of considering the evidence of use of the mark, it ventured into the expansive scope of Section 11(6) and relied upon a prevailing factual scenario to arrive at its conclusion. This judgment has opened a pandora’s box which might lead to many such approaches in the future (where the Trade Marks registry might not keep itself confined to the indicative factors laid down in the statutory provision).

Jessica Bell – Lawyer, Kalus Kenny Intelex, Melbourne Australia

David Cinque – Special Counsel, Kalus Kenny Intelex

The Australian Trade Marks Office has permitted the registration of the trade mark UBER TUTORS after finding that transport and delivery giant, Uber Technologies Inc (Uber Tech) failed to oppose the mark’s registration under the Trade Marks Act 1995 (Cth) (Trade Marks Act).

Background

Uber Tech

Uber Tech, most commonly known as ‘Uber’, is well known for its on-demand transportation and delivery services. Uber Tech first began using the UBER trade mark in around late 2010 when the company began providing on-demand transportation services in the United States. Uber Tech quickly grew and by 2011, was providing on-demand transportation services internationally. The company has since expanded, offering on-demand food (Uber Eats) and package (Uber Connect) delivery, and a range of other services.

With a large range of services on offer, naturally Uber Tech holds multiple trade marks containing the word UBER in Australia. In fact, Uber Tech currently holds 39 current UBER-related trade mark registrations, with a further two applications under examination for further registrations.

Notably, there are a number of trade marks on the Australian trade mark register which contain UBER, but are not registered to Uber Tech.

Uber Tutors

Uber Tutors Pty Ltd (Uber Tutors) is an Australian startup company that was established in 2020 with a plan to develop a web-based portal to provide online tutoring services and connect with students around the globe in a wide range of study areas.

Shortly after its incorporation, Uber Tutors made an application to IP Australia to register the UBER TUTORS logo, a black and white mark containing a stylised letter ‘U’ which resembles a tutor/teacher wearing formal attire, namely a tie and glasses (the Tutors Mark), in class 41 for education related services.

Uber Tech then commenced opposition proceedings against the Tutors Mark in August 2021.

Uber Technologies Inc v Uber Tutors Pty Ltd [2025] ATMO 78

In its opposition, Uber Tech argued that the Tutors Mark should not be registered on the following grounds:

1. section 42(b) of the Trade Marks Act

Use of the Tutors Mark would be contrary to law on the basis that the Tutors Mark would constitute misleading or deceptive conduct or a false or misleading representation under

the Australian Consumer Law and/or satisfy the elements of the tort of passing off because of the similarities between Uber Tech’s marks and the Tutors Mark.

2. section 44 of the Trade Marks Act

The Tutors Mark was substantially identical with, or deceptively similar to, two of Uber Tech’s marks, namely UBER AI LABS and UBERELEVATE, both of which are registered in class 41 with respect to education services.

3. section 60 of the Trade Marks Act

Uber Tech’s relevant UBER marks had acquired a substantial reputation in Australia, and because of that reputation, any use of the Tutors Mark would be likely to deceive or cause confusion amongst consumers as to Uber Tutors’ services being associated with Uber Tech.

4. section 62A of the Trade Marks Act

Uber Tutors had acted in bad faith by deliberately choosing the Tutors Mark with the intention of evoking amongst consumers a correlation between Uber Tech and the tutoring services. This argument was on made on the basis that Uber Tutors had previously posted an image on Instagram using the hashtags #uber and #ubereats.

Decision

Ultimately, Uber Tech failed to establish any of its grounds of appeal and the Hearing Officer was satisfied that the Tutors Mark should proceed to registration.

The reasons for the rejection of each ground of opposition are as follows:

1. section 42(b) of the Trade Marks Act

The Hearing Officer was not satisfied that the strict criteria for determining whether there was a breach of the Australian Consumer Law was met by Uber because the Tutors Mark was not likely to mislead or deceive consumers, nor did the use of the Tutors Mark satisfy the requirements of the tort of passing off.

2. section 44 of the Trade Marks Act

The Hearing Officer agreed that Uber Tutors’ services were of the same description as the services of Uber Tech’s UBER AI LABS and UBERELEVATE marks. However, the Tutors Mark was not substantially identical or deceptively similar to either of these existing marks and was not likely to cause confusion for consumers.

Relevantly, the visual features of the Tutors Mark, as well as the additional word TUTORS, were held to be visually, aurally and conceptually distinct from Uber Tech’s AI LABS and ELEVATE.

3. section 60 of the Trade Marks Act

While Uber Tech’s marks had acquired a significant reputation in Australia with respect to transport and delivery services, this reputation did not include education services.

The Hearing Officer was also not satisfied that the visual similarities between the Tutors Mark and Uber Tech’s marks would likely deceive or cause confusion. This is because the Tutors Mark, when viewed as a whole, contained additional elements that were distinct to Uber Tech’s marks, such as the stylised letter ‘U,’ stacked words, and the word ‘TUTORS.’

It was also noted that ‘uber’ has a well-understood meaning in Australia, connoting the English synonym to ‘outstanding’ or ‘super,’ or alternatively, the German word which translates to mean ‘over, above, or beyond’. This resulted in a lower chance of confusion as the term ‘uber’ is common amongst traders across a wide variety of industries.

4. section 62A of the Trade Marks Act

The Hearing Officer determined that Uber Tech’s evidence of a single Instagram post (as mentioned above) was not sufficient evidence to prove that Uber Tutors had demonstrated any pattern of unscrupulous, underhand, or unconscientious behaviour. Therefore, the UBER TUTORS application had not been made in bad faith.

Will there be an appeal?

Whether Uber Tech will appeal the Australian Trade Mark Office’s decision remains to be seen. However given the Hearing Officer’s strong opposition to its arguments, it is unlikely that Uber Tech will take this step.

Key takeaways

· This decision demonstrates the importance of incorporating highly distinctive elements, such as the Tutor Mark’s stylised ‘U’, to differentiate one’s branding, particularly for businesses seeking to leverage established terms into new markets.

· This decision also highlights that even brands that have become a household name are not guaranteed exclusivity over common or descriptive words, phrases or indicia. Where such elements are used in cross-industry contexts, it does not necessarily mean that consumers will be misled or deceived into thinking a product is of a particular commercial origin.

If you have questions about trade marks or brand protection, contact the KKI Commercial Team.

Authors: Allison Fitzpatrick, Paavana Kumar, Jordan Thompson and Amy Marcus. 

Class actions targeting prominent brands using influencers to advertise their products on social media are on the rise, accusing brands and their influencers of failing to properly disclose paid endorsements. 

A series of recent cases targeting brands and their influencers rely on a similar set of facts – namely that consumers paid a premium for goods recommended by influencers that they might not otherwise have purchased, believing these recommendations were based upon the genuine opinions of these influencers rather than part of a paid ad. With damages sought in the tens to hundreds of millions of dollars, these class actions are proving to be a major concern for brands that engage in influencer marketing. 

Pending Class Actions Involving Influencer Marketing 

Well-known brands across industries have been targeted in recent months for their alleged misleading and deceptive influencer marketing practices. 

ALO Yoga 

Most recently, in Sulici et al. v. Color Image Apparel d/b/a Alo Yoga et al., clothing brand ALO Yoga and 15 of its influencers have been accused of engaging in deceptive marketing practices under the FTC Act, various state consumer protection statutes and state unfair trade practices laws, because the company’s influencers allegedly failed to disclose paid endorsements in their Instagram posts. 

In their complaint, the plaintiffs outline various examples of misleading influencer advertising, including using confusing hashtags such as #aloRUNNER and failing to use #ad or #paidpartner. The named plaintiffs and the class they represent are seeking to recover the difference between the price paid for ALO’s products and the market value of those products to the tune of $150 million. The class claims that they paid a premium for these products based on what they believed to be the impartial opinions of influencers on Instagram rather than paid ads. Along with the staggering dollar amount sought in damages, plaintiffs also seek restitution, attorneys’ fees and injunctive relief. 

ALO Yoga is merely the latest target in this year’s slew of class actions regarding allegedly deceptive influencer marketing practices. 

Revolve 

In April, plaintiffs in a class action filed against fashion company Revolve, Negreanu v. Revolve Group, Inc., et al., similarly alleged that they paid a premium for Revolve products based on what they believed to be authentic endorsements from influencers on social media. Plaintiffs seek more than $50 million to redress the alleged harm claiming violations of the FTC Act and its state law equivalents in more than two dozen states, Florida’s Unfair Trade Practices Act, and California’s Unfair Competition Law, False Advertising Law, and Consumers Legal Remedies Act. 

Shein 

In February, fashion giant Shein was hit with a class action of its own in Bengoechea et al. v. Shein et al., alleging that influencers were compensated to promote Shein products but failed to clearly and conspicuously disclose their material connection to the brand in violation of the FTC Act and its state law equivalents in Illinois. 

In this case, disclosures were sometimes made, but they were often buried at the bottom of captions or in long, hard-to-read hashtags, such as #SHEINSXYxSTAS and #sheininfluencer. Plaintiffs claim these disclosures are insufficient to meet the clear and conspicuous standard required under the FTC Endorsement Guides. Plaintiffs are seeking more than $500 million in damages, as well as disgorgement of profits and injunctive relief. 

Celsius 

Fashion companies are not the only target of recent class actions in the influencer marketing space. In January, energy drink company Celsius and three of its influencers were sued in a class action filed in California federal court, Dubreu v. Celsius Holdings, Inc. et al. This case alleges that those influencers failed to sufficiently disclose that their opinions were part of a paid advertisement rather than genuine and organic thoughts about the product. 

As in the other cases, plaintiffs claim that they would not have purchased Celsius products but for what they believed to be the genuine opinions of these influencers. The plaintiffs are seeking an estimated $450 million in damages for class-wide relief under the FTC Act as well as California’s Unfair Competition Law, False Advertising Law, and Consumers Legal Remedies Act. 

NAD Cases Involving Influencer Marketing 

As these class actions continue to play out in federal courts across the country, the National Advertising Division (NAD), a self-regulatory body of the advertising industry that monitors advertising for compliance with truth-in-advertising laws, has been particularly aggressive in bringing actions against brands whose influencer marketing practices were not in compliance with the FTC Endorsement Guides. 

For example, in a case involving Revolve, itself a subject of a pending class action as noted above, NAD asserted that the influencers’ use of hashtags such as #revolveme and tagging of the Revolve Instagram account were not sufficient, as these elements did not clearly and conspicuously disclose the relationship between the influencers and the brand. Moreover, NAD indicated that simply tagging a brand, particularly when multiple brands are tagged, did not serve as a sufficient disclosure. 

In response to NAD’s inquiry, Revolve changed its Brand Ambassador Guidelines to include #RevolvePartner, #RevolveAmbassador, #Ad, and #Advertisement, and directed its influencers to use these hashtags early in their captions. Further, NAD reaffirmed that the clear and conspicuous disclosure of material connections between brands and their influencers is the responsibility of both parties. 

The brand’s responsibility for influencer conduct is particularly salient in another NAD case involving skincare brand Drunk Elephant, where NAD found that disclosures visible only after the user clicks the hyperlink “more” were not sufficient, nor were hashtags such as “#drunkelephantpartner” where the words ran together. Instead, NAD recommended that disclosures be placed earlier in captions and as separate words, such as “Drunk Elephant Partner” rather than the hashtag. NAD also recommended that influencer videos themselves include clear and conspicuous disclosures (e.g., superimposed and audible, as applicable, where endorsements are visual and/or audible) of any brand partnerships – versus placement of the disclosure in the caption only. 

The Bottom Line 

· Class actions in the influencer marketing space are becoming increasingly common, and expensive, with sought-after damages ranging from the tens to hundreds of millions of dollars. These cases are targeting influencers’ and advertisers’ failure to clearly disclose when social media posts are paid advertising.

· The NAD is paying close attention to influencer activities, as evidenced by a recent wave of inquiries into influencer posts that failed to clearly disclose the material connection between the influencer and the sponsoring brand.

· Brands should review their influencer agreements and social media policies and actively monitor influencer conduct to ensure compliance with truth-in-advertising laws and the FTC’s Endorsement Guides in order to mitigate the risk of class action lawsuits and NAD actions.

Conclusion 

This recent trend in class actions and NAD involvement suggests that brands are open to significant legal liability stemming from the actions of the influencers that promote their products. Davis+Gilbert continues to monitor developments as these cases (and others) work their way through the courts and NAD. 

By A. & K. METAXOPOULOS AND PARTNERS LAW FIRM

On 18/04/2024 the Greek Parliament has enacted Law No. 5103/2024 dealing with the protection and promotion of Greek-language songs as an element of cultural identity. The new law introduces provisions in the form of, on the one hand, guidelines and, on the other hand, obligations for radio stations and managers of public and private shared spaces. Specifically, the law includes provisions related to creating motives for the transmission of Greek-language music, establishing minimum rates of transmission, and setting up an electronic database and online application for Greek-language songs. Additionally, provisions have been made for the procedures for control and the imposition of administrative sanctions.

According to Article 3, for the purposes of the Law, a Greek-language song means a musical work composed of music and lyrics, as long as at least half of its duration is occupied by text in the Greek language. The concept of Greek-language song also includes the orchestral musical performance of a Greek-language song, as well as musical works without lyrics that have been recorded in Greek territory.

Below are briefly presented the main provisions of the law:

Article 7 provides a commercial incentive to radio stations, both informational and non-informational, with the aim to increase the airtime for Greek-language songs. This specific provision that applies to stations that primarily or partially broadcast foreign-language repertoire sets out percentages for increasing the allowed advertising time in case they increase the rates of transmission of Greek-language song in relation to the rates they transmitted in the year 2023. This provision acts as an encouragement, in contrast to the other provisions below, which take on a mandatory nature.

Article 8 provides that the minimum percentage of Greek-language music performed in the common areas of hotels and complex tourist accommodations (as such meaning exclusively the entrance, reception areas and elevators), if music is publicly performed, cannot be lower than forty hundred (40%) of all performed musical works.

With reference to the common areas of shopping centers (as such meaning exclusively the parking areas, corridors and other areas where visitors stay, excluding commercial stores and other independent businesses operating within them), Article 9 stipulates the same minimum percentage for the public performance of Greek-language works.

In the same way, Article 10 regulates the public performance of Greek-language songs, in the common areas of casinos (as such understood exclusively in the reception and waiting areas for customers and the elevators).

Article 11 introduces a distinction regarding the minimum percentage of public performance. It concerns the common areas of public transportation (as such understood exclusively the areas of the stations and platforms for boarding and disembarking passengers of the metro and trains, the areas of the stations and platforms for boarding and disembarking passengers of the electric railways) as well as the public areas passenger waiting areas of airports and ports (as such meaning exclusively the covered areas intended for the waiting of passengers before boarding them on planes and ships respectively). The minimum percentage of transmission of Greek-language songs cannot be lower than forty-five percent (45%) of the total number of musical works performed, as long as music is publicly broadcast.

Article 12 provides for a potentially favorable evaluation of audiovisual or cinematographic productions, on the condition that they incorporate Greek-language songs or an orchestral musical performance of a Greek-language song or musical works without lyrics or with lyrics in the language of an EU member state, which are recorded in Greek territory in accordance with the provisions of par. 4 of article 54 of Regulation (EU) 651/2014 of the Commission. The evaluation concerns the inclusion of such productions in aid regimes or funding programs of the Greek State, on the condition that they meet the eligibility rules and criteria set out in Regulation (EU) 651/2014, Article 54, paragraph 4, of the European Commission.

Article 13, refers exclusively to the creation of an electronic database for Greek-language songs and an online application for accessing it (which are posted on the official website of the Ministry of Culture following the written consent of the beneficiaries). The electronic database contains the identification data of Greek-language songs, orchestral musical performances of Greek-language songs, orchestral music by Greek composers and recordings recorded in Greek territory based on the data provided by the competent collective management organizations. The online application provides the possibility to search the content of the electronic database and draw up an original list of Greek-language songs that have been recorded in the territory.

Finally, Article 14 defines the procedure for monitoring and imposing administrative sanctions on each category of obligated parties for any violation with respect to the above.

It is understood that these provisions indirectly affect the Greek intellectual property law system, particularly the collective management of rights. Those obligated to publicly perform a minimum percentage of Greek-language repertoire are required to submit a list of all musical works they have publicly performed to the Collective Management Organizations (CMOs) and the Organization for Intellectual Property (OPI). The CMOs issue a certificate for the exact percentage, while the OPI provides a reasoned opinion for the imposition of sanctions in the event of non-compliance with this obligation.

In conclusion, the new legislative initiative is based both on the protection of intangible cultural heritage and the promotion of the Greek language as a means of expressing cultural identity. However, we cannot overlook the fact that the relevant legislative provisions have created elicit mixed feelings and reactions, both from those obligated to comply with the new regulations as well as from foreign right holders/organizations who are definitely affected adversely by the provisions of the above law.

By James P. Flynn, Epstein Becker Green

In 2015, the Wall Street Journal observed why Birkenstock sandals might be considered cool:

“It’s a taboo thing,” said New York-based stylist Brian Coats, who dresses Jimmy Fallon. “The fact that Birkenstocks are so uncool makes them cool.” The unstylish stereotype tied to Birkenstocks, said Mr. Coats, has made them ripe for the sort of re-contextualization that happens so often in fashion. [Ortved, CAN BIRKENSTOCKS EVER LOOK COOL ON A MAN?, WSJ, 5/14/2015]

An earlier article about the NHL saw no such ambiguity or reverse logic applicable to hockey because “Real Men Wear Skates,” and it seems unlikely that you’ll ever “convince me that hardwood is cooler than ice.” Why? Well because “NBA players dream of getting their next shoe contracts. Not hockey players. They dream of having their names etched on the Stanley Cup, the holy grail of pro sports trophies. Quick, what’s the name of the NBA’s championship trophy? See what I mean?” So hockey and everything associated with it is cool because “[h]ockey players have to combine all that speed and agility on top of managing to stay upright on a large ice cube” to produce “the undisputed best sport on the planet.” THW Archives, 10 Reasons Hockey Is the Greatest Sport on Earth, February 22, 2025. So, we have two different kinds of cool—the “so uncool that they are cool” sandals and a “so cool nobody comes close” sport.

There is a lot of money and opportunity in “cool” because “[c]ool products fill a genuine consumer need,” they “seduce consumer fantasy and imagination,” and they “appeal to the right group,” according to FORBES. Of course, they can exude cool, at least for a while, without having any real inherent value or use, like Pet Rocks or Silly Bandz, or they can be sneakers that do what sneakers do after incorporating the coolest inspirations of all time. And it is just these efforts to exude, and profit off, cool that led Birkenstock to want to copyright aspects of their sandals and a hockey memorabilia dealer to market Stanley Cup-shaped awards filled with melted rink ice from noteworthy games. While we can debate the level of “cool” involved with any of these products, courts in the US and EU have made clear that cool or useful ideas are not necessarily enough to support copyright registration.

Indeed, recent copyright decisions in the United States and Germany have shed light on the boundaries of copyright protection for product designs, particularly when functionality intersects with artistic expression. The United States Court of Appeals for the Third Circuit’s ruling in Grondin v. Fanatics in late 2024 and Germany’s Federal Court of Justice decision in Birkenstock v. Tchibo and Shoe.com more recently provide contending perspectives on what constitutes a copyrightable work.

Let’s first explain the facts of each case briefly. In Grondin v. Fanatics, William Grondin alleged that Fanatics, Inc. infringed upon his copyright for “Slice of the Ice,” a transparent, hollow hockey puck-shaped object partially “filled with melted rink ice from noteworthy games.” In 1998, Grondin received copyright protection for Slice of the Ice, which he described as a “reproduction of the Stanley Cup in Lucite, with a puck-shape cavity containing melted ice.” With licenses from the NHL, Grondin sold Slice of the Ice to NHL franchises who then sold it to fans. Fanatics began selling products that were a simplified version of Slice of the Ice, and included a transparent hockey puck filled with melted rink ice. In May 2022, Grondin sued Fanatics for copyright infringement, claiming that he had a a valid copyright and that the products were substantially similar in that each incorporated (1) the idea of hockey memorabilia being filled with melted rink ice, (2) the process of retrieving rink ice, (3) the idea of providing a certificate of authenticity, (4) the use of a puck-shaped object, (5) the fact that the hockey puck is transparent, (6) the fact that the hockey puck is hollow, and (7) the amount of melted rink ice with which the hockey puck is filled. The Court acknowledged Grondin’s valid copyright registration but emphasized that copyright protection does not extend to functional aspects of a design. The court identified the transparency, hollowness, and inclusion of an air bubble in Grondin’s design as functional features essential for displaying melted rink ice, thus not protected by copyright. Consequently, Grondin’s claim failed due to the lack of substantial similarity between any protected artistic elements of his design and Fanatics’ product.

Conversely, in Birkenstock v. Tchibo and Shoe.com, Germany’s Federal Court of Justice addressed whether Birkenstock’s sandal designs qualified as “works of applied art” eligible for copyright protection. The court emphasized that for a design to receive copyright protection, it must exhibit a high degree of individual creativity and artistic achievement. In this instance, the court found that the functional aspects of Birkenstock’s sandals, such as their focus on comfort and natural gait and historic “commitment to the art of making orthopedically inspired shoes” limited the scope for artistic expression. Consequently, the sandals were deemed primarily utilitarian products lacking the necessary artistic originality for copyright protection. The Court concluded that the sandals did not exhibit the requisite level of artistic creativity to warrant such protection. It determined that the design elements were primarily dictated by technical and functional considerations rather than artistic expression. Therefore, the sandals were deemed functional products without copyright protection.

Both cases underscore a critical principle in copyright law: the distinction between artistic expression and functional design. In Grondin, the U.S. court recognized the existence of a valid copyright but limited its scope by excluding functional elements from protection. In contrast, the German court in Birkenstock denied copyright protection altogether, citing insufficient artistic merit in the design.

These decisions highlight jurisdictional nuances in assessing copyright eligibility for product designs. While both courts aim to prevent monopolization of functional aspects through copyright, their approaches differ. The U.S. court focused on separating protectable artistic features from functional ones within a copyrighted work, whereas the German court required a higher threshold of artistic creativity for the entire design to qualify for copyright protection. In summary, these rulings illustrate the delicate balance courts must maintain between protecting creative expression and ensuring that copyright law does not encroach upon the domain of functional design, which is more appropriately safeguarded by patent or design laws. Expanding upon the comparative analysis of Grondin v. Fanatics and Birkenstock v. Tchibo and Shoe.com, one can further see how courts in these different jurisdictions have addressed the boundary between copyright protection and functional design by comparing these cases with other notable rulings.

A key principle in U.S. copyright law (as well as Indian copyright law as it turns out) is the conceptual separability test, which determines whether an artistic feature can be identified separately from, and exist independently of, the functional aspects of a product. This principle was central to the Third Circuit’s reasoning in Grondin v. Fanatics, where the court concluded that Grondin’s puck design included functional elements that were not copyrightable. In Star Athletica, L.L.C. v. Varsity Brands, Inc., 580 U.S. 405 (2017), which was the subject of a previous post here, the U.S. Supreme Court ruled that the arrangement of stripes, chevrons, and color blocks on cheerleading uniforms was eligible for copyright protection because these elements were conceptually separable from the uniforms’ functional purpose. The Court reasoned that the designs could exist independently as two-dimensional artwork on another medium, such as a painting or a fabric print. Star Athletica contrasts with Grondin, where the court determined that the transparent, hollow nature of the hockey memorabilia served an essential function—displaying melted rink ice—and could not be separated from that function. In another case of note, Carol Barnhart Inc. v. Economy Cover Corp., 773 F.2d 411 (2d Cir. 1985), the Second Circuit ruled that torso-shaped display mannequins were not copyrightable because their sculpted forms were dictated by their function—displaying clothing. That case aligns with Grondin in rejecting copyright claims over objects whose aesthetic elements are inherently tied to functionality.

This US perspective does not sit in copyright analysis alone, as it also infuses trademark and trade dress analysis in the United States. This is seen in the recent May 2, 2025 Trademark Trial & Appeal Board decision in In re Tinder LLC, Nos. 86608903 and 86680923 (T.T.A.B. May 2, 2025) refusing to register SWIPE LEFT as a trademark for Tinder. There, the TTAB refused to register that mark because that phrase merely “describes a common manner of navigating software” and “a key feature and function of Applicant’s software, because consumers using Applicant’s mobile dating application ‘swipe left’ on pictures of potential romantic partners to indicate rejection or disinterest.” In other words, the phrase does not indicate a source of the app’s origin but rather indicates a step in having the app function consistent with user decision-making. Likewise, in February 2025, the United States Court of Appeals for the Second Circuit noted in Cardinal Motors, Inc. v. H&H Sports Protection USA Inc. that “[t]o plead a claim for trade dress infringement based on product design, a plaintiff must plead that (1) its product design is distinctive, (2) there is a likelihood of confusion between its product design and that of the defendant, and (3) its product design is not functional.” (emphasis added). Perhaps even more telling, the Fourth Circuit, in 2024, had noted in TBL Licensing, LLC v. Katherine Vidal, Director of the United States Patent and Trademark Office, 98 F. 4th 500, __ (4th Cir. 2024), that Timberland could not register features from the design of its popular boot under the Lanham Act as trade dress because US law “bars the registration of product designs that are functional since protection of functionality is reserved for patent law,” providing in a sense an earlier trade dress version of the failed copyright claim Birkenstock would assert in the German case.

Interestingly, European courts often impose a higher standard of artistic creativity before granting copyright protection to industrial designs. This was evident in the German Federal Court of Justice’s decision in Birkenstock v. Tchibo and Shoe.com, where the court rejected copyright protection for Birkenstock’s sandal design on the grounds that it lacked sufficient artistic merit. For another example, Cofemel v. G-Star Raw case (C-683/17) before the Court of Justice of the European Union (CJEU) reinforced the principle that copyright protection in the EU requires an original creation reflecting the author’s free and creative choices. In this case, the CJEU ruled that clothing designs could be copyrighted if they displayed originality beyond their functional purpose. This decision suggests that Birkenstock might have prevailed under a different interpretation of originality, but the German court imposed a stricter standard. This German standard dates back to earlier cases, such as Mag Instrument Inc., v. Eduscho GmbH & Co. KG, 7 May 1998 (Bundesgerichtshof, Case I ZR 142/97) and Firma Mag Instrument Inc., v. Firma Ampercell Vertriebsgesellschaft fűr elektronische Erzeugnisse mbh, 29 September 2000 (Landgericht Köln, case 81 O 117/99), where German courts ruled that the shape of a Maglite flashlight was not eligible for copyright protection because it was primarily dictated by technical function rather than artistic design, as Lidgard discusses (at 15-16, before going on 16-18 to discuss protections achieved for the Maglite under Swedish law). These earlier German cases closely parallel Birkenstock v. Tchibo and Shoe.com, as both involved product designs that were deemed insufficiently artistic for copyright protection.

So that leaves us with a few key takeaways from comparing these two approaches and the cases that flow from them:

1. Functionality vs. Artistic Expression: U.S. courts tend to assess whether a product’s artistic elements can be conceptually separated from its function (Star Athletica), while European courts often (but not always as we can see in Sweden) apply a higher threshold for originality (Cofemel).
2. Higher Artistic Standard in Europe: The German court’s denial of copyright in Birkenstock aligns with prior European rulings such as Maglite, which rejected protection for utilitarian design.
3. Diverging Outcomes in Industrial Design Cases: While Varsity Brands in Star Athletica succeeded in securing copyright for cheerleading uniform designs, Birkenstock was denied protection, demonstrating the different copyright philosophies between the U.S. and Germany. The contrasting decisions in Grondin v. Fanatics and Birkenstock v. Tchibo illustrate broader legal debates on the copyrightability of industrial designs. While the U.S. courts apply the conceptual separability test to distinguish protectable artistic elements from functionality, German and EU courts demand a higher degree of originality for product designs to qualify for copyright protection.

These differing approaches reflect fundamental differences in how copyright law interacts with design and functionality across jurisdictions. Of course, some believe that the dichotomy is a false one:

“Birkenstocks are an amazing piece of applied art,” University of Technology Sydney honorary research fellow Emily Brayshaw told the Washington Post. “Their unique design is grounded in the principles that were very much in discussion in German design schools and movements of the mid-20th century…. Even deciding that function must come first and aesthetics must come second is still an aesthetic decision.” [Cascone, No, Birkenstocks Are Not Works of Art, Rules German Court, ArtNet, Feb. 21, 2025]

Others do see the distinction as remaining relevant, and note that the “Birkenstock case puts the creative/technical distinction to the test….None of this is to say that Birkenstock sandals can’t have copyrightable elements. … However, given Birkenstock’s historical affinity for function over fashion, the present case raises a question of what those copyrightable elements might be.” The German court ultimately found little to protect.

So, we learned a little law, learned that Birkenstocks are not protected by German copyright law, and learned that melted ice (otherwise known as “water”) is not copyrightable in the US. But, back to where we started. Birkenstocks may be cool and “undeniably iconic,” and they are debating on TikTok (at least for now, given the latest extension) the very question “Are Birkenstocks Still Cool In 2025?” As for hockey, “it’s a rogue sport that …will always be cool ….” Enough said.

By Daniel H. Bliss

Suppose you want to register a trademark that identifies a source of goods/services for your business. What if the trademark describes an ingredient, quality, feature, function, characteristic, or purpose of your goods/services? Can your trademark be too descriptive to obtain a registration from the U.S. Patent and Trademark Office? The answer is YES! if the mark is highly descriptive and has not acquired distinctiveness. (more…)

Jessica Bell, Kalus Kenny Intelex, Melbourne Australia

A recent trade mark stoush in the eyelash extension market highlights the importance of registering trade marks in all states of Australia, and ensuring that trade marks that intend to be used are registered as soon as possible. (more…)

By Marie Lussier of Fogler Rubinoff LLP

In July 2024, I discussed proposed changes to trademark proceedings in Canada. Following a public consultation period, revised Regulations came into force on April 1, 2024 that incorporate those proposed changes. The changes aim to improve the efficiency of dispute resolution proceedings in Canada. Time will tell if that goal is achieved but, for now, practitioners and stake holders should be aware of key changes affecting the conduct of opposition proceedings in Canada.

1. Costs

The Registrar may not award costs against one party – both in an opposition and in a summary cancellation (S. 45) proceeding. A party can obtain costs whether or not they are successful, but cost awards will only be granted in exceptional circumstances and upon request.

Circumstances that may support a cost award include the following 3 for oppositions – and the latter 2 for summary cancellations:

1. Where the opposed application is refused because it was filed in bad faith;
2. Where a request for an oral hearing is withdrawn less than 14 days prior; and
3. Where one party engages in conduct that causes undue delay or expense.

Before awarding costs, the other party will be given notice and an opportunity to make submissions. The Registrar will provide reasons for their decision and the order may be filed with the Federal Court to then be enforced as an order of the Court.

Cost awards by the Registrar will not be automatically awarded to the successful party and will be nowhere the amount that would be awarded in litigation matters.

2. Confidentiality Orders

The Registrar can order that certain evidence filed in an opposition proceeding be kept confidential. That evidence includes affidavits, cross-examination transcripts and undertakings and written representations.

The request for a confidentiality order must be made before the evidence is filed and must (a) describe the evidence, (b) state that the evidence has not been made public, and (3) explain why it should be kept confidential. The other side can comment on the request and, if they breach an order once granted, the Registrar many award costs against them.

3. Case Management

The Registrar can now, at any time, designate a proceeding as being “case managed” and can, thereafter, set the time and/or manner for any step to be completed, despite what is specified in the Act or the Regulations.

The Registrar will not use their case management power to deal with substantive issues but more so to coordinate matters involving related files, to schedule a conference call with the parties and to address uncooperative behaviour.

4. Evidence on Appeal

Finally, the changes to the Regulations provide that, when appealing a decision of the Opposition Board to the Federal Court, leave of the Court is now required to file new evidence. Previously, new evidence could be filed without leave of the Court.

By Gregory J. Krabacher, Epstein Becker Green

Recently, the U.S. Copyright Office published the second of an intended three-part report entitled “Copyright and Artificial Intelligence.” Here are those three parts:

• Part 1: Digital Replicas (aka “Deep Fakes”), published July 31, 2024;¹

• Part 2: Copyrightability, published January 29, 2025;² and

• Part 3: Legal implications of training AI models on copyrighted works, licensing considerations, and the allocation of any potential liability, publication date to be decided.³

(more…)

By Daniel H. Bliss

Suppose that you have obtained a U.S. trademark registration for your trademark on goods or services for your business. Can your trademark registration be cancelled with the U.S. Patent and Trademark Office based on genericness? If so, what is the appropriate time period for assessing whether a trademark is generic? Is the appropriate time period at the time of registration or subsequent to the date of registration? The answer is YES! for both if the trademark was either generic at the time of registration or subsequent to the date of registration. (more…)