Brussels Court of Appeal finds Dr Martens’ yellow stitching distinctive
Time：2025-11-04
Publication Date：2025-11-04
Background
Airwair manufactures Dr Martens footwear, including the “world-famous” 1460 model, and has registered the following marks in Class 25 of the Nice Classification:
(i) a shape mark for the yellow stitching,
(ii) a position mark for the yellow stitching on a black welt (which is currently the subject of another invalidity claim, pending before the First Chamber of the Benelux Court of Justice, and therefore, for ensuring procedural economy, not discussed in this decision),
(iii) another shape mark for the sole pattern, and
(iv) a figurative mark (i.e., its “resistance rectangle” mark).
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| The 1460 model |
After discovering Redisco’s sales of allegedly infringing footwear, Airwair requested a cease and desist in late 2020. Believing the sales continued into 2022, Airwair brought an infringement action. Redisco, in turn, sought invalidation of Airwair’s marks for lack of distinctiveness and denied infringement on the basis of “not insignificant differences” between its signs and Airwair's marks.
At first instance, the Dutch-speaking Commercial Court of Brussels invalidated the sole pattern mark.
Court of Appeal decision
On the sole pattern
The court found the soles of Dr Martens capable of indicating the commercial origin of the goods.
The CoA acknowledged that, when the sign in question consists solely of a shape mark, the average consumer does not usually perceive the shape of the product as a trade mark. However, as Airwair demonstrated, many brands – including Converse, Vans, and Nike – commonly use sole patterns as the “distinguishing feature” of their shoes. Furthermore, Airwair’s strong emphasis on the unique imprint left by Dr Martens soles in its advertisements and press releases allows consumers to associate that specific pattern with its goods.
Comparing the signs to the trade mark, the court identified certain differences between Airwair’s and Redisco’s soles, which are “not so insignificant that they could escape the attention of even a low-attention consumer”.
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| Airwair's registered shape mark for Dr Martens soles |
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| Two exemplary soles from Redisco's shoes |
There are apparently some alterations made in the sole patterns of the allegedly infringing shoes. However, as the court observed, they are not identical to Airwair’s trade mark, preventing them from constituting infringement under Art.2.20(2)(a) BCIP.
To avoid a finding of likelihood of confusion, Redisco attempted to argue that Dr Martens soles could only have an extremely low degree of distinctiveness. This, according to Redisco, should prevent a finding of likelihood of confusion even when the differences between the soles are trivial. It further argued that the significant price difference between Dr Martens shoes and Redisco’s footwear is capable of warning the relevant consumers that the shoes they are about to purchase do not originate from the former.
Rejecting all these claims, the court found that (i) there exists a high degree of visual similarity between the sole patterns, (ii) the goods on which the trade mark and signs are used are identical, (iii) Airwair’s shape mark enjoys at least an average degree of distinctiveness, (iv) the relevant consumer only has a low level of attention, and (v) neither the difference in quality nor price can be decisive in the assessment. Thus, the court established trade mark infringement on the grounds of likelihood of confusion, under Art. 2.20(2)(b) BCIP.
On the yellow stitching shape mark
Redisco challenged the validity of the shape mark, demonstrated below, by arguing that it is merely a simple “decoration”, which prevents consumers from perceiving it as a distinctive sign. Furthermore, Redisco claimed that it actually is a “necessary stitching technique” and should remain available to other participants in the market.
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| The shape mark consisting of yellow stitching in the edge between the upper leather and the sole of the shoe |
The court agreed that Airwair’s footwear uses the common ‘Goodyear method’, and stated that the use of contrasting colours for the stitches and the leather is a common practice. Moreover, since Airwair does not “deviate significantly from … what is customary in the sector”, the court ruled that the sign lacked intrinsic distinctive character. After considering various factors, including the intensity of the use of the mark, the amount of Airwair’s advertising expenditure as well as its market share, the court held that the mark had acquired distinctiveness through use. The CoA further highlighted that the existence of various Goodyear footwear with coloured stitches cannot negate this finding, as Airwair’s registration and acquired distinctiveness claim were exclusively for the yellow stitching.
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| Two of the four allegedly infringing shoes Redisco sales |
Given the shoes demonstrated above use orange and white stitches, double identity case was not established. However, given the average visual similarity between the signs and Airwair’s mark, the high degree of distinctiveness of the latter, and the low level of attention of the relevant consumer, the court ruled that there is a likelihood of confusion.
Interestingly, however, the court did not find a likelihood of confusion in relation to the signs used on the shoes below:
According to the CoA, the overall impression given by the signs on these shoes and by Dr Martens are different, due to the use of “smaller stitches” and a “thinner thread”. It is decided by the court that these differences, together with the absence of yellow stitches, “cannot escape the attention of the relevant consumer”, and therefore, cannot amount to infringement.On the figurative mark
Finally, the court was asked to decide whether the use of the sign below infringed Airwair’s figurative mark.
Redisco argued that only the figurative element in Airwair’s mark could constitute the distinctive – and therefore protected – feature, not the words “oil, fat, acid, petrol, alkali, resistant”, as they are merely descriptive.
Although Redisco avoided reproducing the figure on the left, the lack of evidence demonstrating that words on the right are considered merely descriptive by the Benelux average consumer, led the court to rule that there exists a likelihood of confusion between the two signs, particularly due to the identical configuration of the words.
Comment
Some findings of the CoA, such as the recognition of a likelihood of confusion regarding the sole patterns, appear straightforward and largely uncontroversial. However, this Kat is less persuaded by its remaining findings.
It is difficult to reconcile the finding that consumers with a low level of attention would fail to notice differences between sole patterns, yet readily distinguish stitches based on their thickness or thread size. If Dr Martens stitching is found to be so distinctive and well-known that even non-yellow colours (i.e., orange and white) can still evoke it, it seems questionable that thinner white stitches would easily avoid confusion. In other words, the court does not seem to have provided a consistent approach in ruling that the fictitious consumer would be misled by the use of orange or white stitching, but not by white stitching when the stitches are smaller than those of Dr Martens’. It is also worth noting that, if solely yellow stitching in the edge is protected then, only several shades of yellow stitches inserted to the same place of shoes could be covered by Airwair’s trade mark, which could – or indeed should – include thinner yellow stitches, but not stitches with another colour.
Finally, although the defendant does not appear to have provided evidence that demonstrates that the average Benelux consumer considers the words found in the claimant’s figurative mark descriptive, the CoA could still have assessed the distinctiveness of those English words. Such assessment might have demonstrated that the words would at most enjoy a low level of distinctiveness and merely using those terms in the same configuration might not have been sufficient for a likelihood of confusion.
Source: https://ipkitten.blogspot.com/2025/10/brussels-court-of-appeal-finds-dr.html
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