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March 1, 2016 Vol. 71 No. 4 Back to Bulletin Main Page

How to Best Position Your Position Mark in Europe


Neither the European Community Trade Mark Regulation (Council Regulation (EC) No 207/2009 of Feb. 26, 2009, on the Community trade mark – CTMR) nor the Trade Marks Directive (Directive 2008/95/EC of the European Parliament and of the Council of Oct. 22, 2008, to approximate the laws of the Member States relating to trademarks – TMD) contains any provisions on “position marks,” i.e., trademarks characterized by the special way they are arranged or placed on the product.

Pursuant to Article 4 CTMR, a Community trade mark (CTM) may consist of any signs capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings. The same applies to national trademarks registered in the European Member States pursuant to Article 2 TMD.

Both under Article 7(1)(b) CTMR and Article 3(1)(b), TMD trademarks devoid of distinctive character shall not be registered.

Recent case law indicates that the criteria for assessing the distinctive character of position marks filed as CTMs and national (German) trademarks seem to be different.

Requirements for Registrability of CTMs vs. German Trademarks

In Sartorius Lab Instruments GmbH & Co. KG v. OHIM, the European General Court (EGC, Judgment of Feb. 26, 2014, Case T-331/12, paragraphs 13 et seq.) noted that it is irrelevant that “positional marks” are not a specific category of marks, since Article 4 CTMR does not contain an exhaustive list of signs capable of being CTMs. Even though “positional marks” are similar to the categories of figurative and three-dimensional marks, because they concern figurative or three-dimensional elements that are applied to the surface of a product, their classification of a “positional mark” as a figurative or three-dimensional mark is, according to the EGC, also irrelevant for the purpose of assessing its distinctive character. The EGC further noted that under current European case law, a minimum degree of distinctive character is sufficient to render the absolute ground for refusal set out in Article 7(1)(b) CTMR inapplicable, but the perception of the relevant public is liable to be influenced by the nature of the sign with respect to which registration is sought. Therefore, according to the EGC, to the extent to which average consumers are not in the habit of making assumptions as to the commercial origin of goods on the basis of signs which are indistinguishable from the appearance of the goods themselves, such signs will be distinctive within the meaning of Article 7(1)(b) CTMR, only if they depart significantly from the norm or customs of the sector.

The EGC emphasized that the criterion that the sign is indistinguishable from the appearance of the product in question has, according to case law, been applied to deny registration not only to three-dimensional marks, but also to (i) figurative marks consisting of a two-dimensional representation of the product in question; (ii) a sign consisting of a design applied to the surface of the product; and (iii) colors and abstract combinations, which cannot be regarded as intrinsically distinctive except in exceptional circumstances, since these are indistinguishable from the appearance of the goods designated and are not, in principle, used as a means of identifying commercial origin. The EGC concluded that in those circumstances it is necessary to determine whether the mark applied for is indistinguishable from the appearance of the product designated or whether, on the contrary, it departs significantly from the norm and customs of the relevant sector.

In applying this test, the EGC, in Sartorius Lab Instruments GmbH & Co. KG v. OHIM, denied the distinctiveness of the following CTM application, depicting, according to the applicant, a yellow curve at the bottom edge of an electronic display unit:

The EGC confirmed that OHIM’s First Board of Appeal was able to rule on the appeal by determining the relevant public and its level of attentiveness towards the goods in question as well as the distinctive nature of the mark applied for. It shared the view of the Board of Appeal that the application of the mark on the product essentially affected machines for industrial applications, apparatus, principally for scientific use, medical instruments and apparatus, and apparatus and installations for the treatment of water and treatment of solutions in the pharmaceutical, medical and laboratory fields and other devices and that these goods were special technical products aimed at professionals who paid them a medium to high level of attention. The EGC therefore concluded that the Board of Appeal did not err in holding that, in the case of marks such as the sign in question, which are not independent of the goods they designate, only a mark that significantly departs from the norm or customs of the sector is not devoid of distinctive character. The Board of Appeal consequently applied, according to the EGC, the respective case law to consumers in the specific sector relevant to the mark applied for and not, as the applicant claimed, to the average consumer in general.

The same position mark that was subject to Sartorius Lab Instruments GmbH & Co. KG v. OHIM was filed by the applicant as a national trademark application in Germany. The German Patent and Trademark Office (GPTO) requested that the applicant submit a proper description of the application, containing details on the size and the proportion of the mark. It informed the applicant that it would consider the application as being withdrawn if the applicant failed to submit the description within the deadline set by the GPTO. The applicant refused to provide the GPTO with further details and argued that its current description was sufficient. The GPTO then informed the applicant that it considered the application as being withdrawn. On the applicant’s appeal, the German Federal Patent Court (Judgment of May 22, 2014, Case 30 W (pat) 526/12) decided that there was no requirement to define a position mark by also providing details on the proportion between the mark and the product it is attached to. According to the court, it was sufficient if the proportions could be deduced by a reasonably observant overall view of the visual representation of the mark and its description. Accordingly, the court held that the description as provided by the applicant was sufficient and repealed the GPTO’s decision. Since then, the trademark has been registered in Germany (DE 302011008039).

Only a few weeks before Sartorius Lab Instruments GmbH & Co. KG v. OHIM, the EGC in Margarete Steiff GmbH v. OHIM (Judgments of Jan. 16, 2014, Case T-433/12 and T-434/12) applied the same principles and denied distinctiveness of the following identical CTM applications, by which protection was sought, according to the descriptions contained in the applications, for a round metal button attached to the ear of a soft toy (Case T-433/12) and for a label attached by means of a button to the ear of a soft toy (Case T-434/12), respectively, for stuffed toy animals:

In both cases the EGC held that, due to its close connection with the toy, the CTM application (button/label) “merges” with the appearance of the product. The EGC further held that there was nothing exceptional about the attachment of the respective button or label that would indicate origin, as the average consumer would see it as being either merely decorative or functional.

The applicant registered both position marks as German trademarks also (DE 302010059754 and DE 302010059753). Apparently the GPTO did not question the distinctiveness of the marks.

In K-Swiss, Inc. v. OHIM (Judgment of June 13, 2014, Case T-85/13), the EGC in invalidity proceedings denied the distinctiveness of the following CTM which the applicant declared was in fact a “position mark” (a mark that was almost identical to a German trademark that had been applied for in 1990 and registered with the GPTO under DD 660007 since 1992):

According to the EGC, the CTM at issue consisted of the two-dimensional representation of the shape of a shoe with five parallel stripes on its side. It could not, therefore, be disassociated from the products it designated, namely shoes, said the court. Consequently, it must, according to the EGC, be considered to be indistinguishable from the appearance of the products designated and, therefore, the EGC’s case law explained above was applicable. The EGC argued, among other points, that the evidence put forward by the applicant did not prove that the mark at issue departed significantly from the norm or customs of the sector. It confirmed OHIM’s view that placing decorative elements on shoes was a common practice and that many variations of geometric patterns were placed on the sides of shoes. It further confirmed that consumers would not consider those elements to be an indication of origin of the products unless they had become fixed in the minds of consumers through intensive use as identifiers of commercial origin. Finally, the EGC held that the fact that some signs placed on the sides of shoes that did not have the intrinsic distinctive character required to be considered marks, but had acquired distinctive value by virtue of the intensive use which had been made of them in the market, did not suggest that consumers had learned to establish a link between any sign placed on the side of a shoe and a particular manufacturer.

Taking quite a differing view of issues similar to those in K-Swiss, Inc. v. OHIM, the German Federal Patent Court (Judgment of Oct. 2014, Case 27 W (pat) 511/14) confirmed distinctiveness of the following German trademark applied for “shoes.” The court held that, although leisure and sport shoes have often significant color, image or other design elements, usually basic forms, simple patterns or well-known motifs are dominant. In addition to using graphic patterns and forms as a means of shaping the product itself, graphical elements—especially large and exposed ones on the sides of the shoes—are, according to the German court, widely used as trademarks for shoes. Whether these elements are used on the outer or inner side of shoes, they will be perceived as trademarks, because the public—influenced by common practice in the shoe sector—will expect that such elements contain an indication of commercial origin.

In Think Schuhwerk GmbH v. OHIM (Order of Sept. 11, 2014, Case C-521/13), the Court of Justice of the European Union (CJEU) dismissed an appeal against a judgment of the EGC (July 11, 2013, Case T-208/12) in which the latter dismissed an application for annulment of OHIM’s First Board of Appeal decision concerning a CTM application for registration of the following trademark constituted by red shoelace aglets:

The CJEU held that, according to the CJEU’s settled case law, distinctive character within the meaning of Article 7(1)(b) CTMR must be assessed: first, by reference to the goods or services with respect to which registration has been applied for and, second, by reference to the relevant public’s perception of the mark. According to equally consistent case law, the perception of the average consumer is, according to the CJEU, not necessarily the same for trademarks consisting of the appearance of the product itself as it is in relation to a word or figurative mark consisting of a sign which is independent of the appearance of the products it denotes, since average consumers are not in the habit of making assumptions about the origin of products on the basis of their shape or the shape of their packaging in the absence of any graphic or word element. It could therefore prove more difficult to establish distinctiveness in relation to such a three-dimensional mark than in relation to a word or figurative mark.

The CJEU further reiterated that, first, in those circumstances, only a mark which departs significantly from the norm or customs of the sector and thereby fulfills its essential function of indicating origin is not devoid of any distinctive character for the purposes of Article 7(1)(b) CTMR, and second, that case law, which was developed in relation to three-dimensional trademarks consisting of the appearance of the product itself, also applies where, as in the present case, the trademark applied for was a figurative mark consisting of the two-dimensional representation of that product. In such a case, the mark likewise would not consist of a sign unrelated to the appearance of the products it covers. The CJEU concluded that it was precisely that case law which the EGC considered and applied in the present case, thereby validating the decision at issue without committing an error of law, since it had stated in its assessment that shoelace aglets were indissociable from shoes and that the mark at issue would be indistinguishable from the appearance of the product covered by the application for registration.

Apparently the applicant did not file an identical German application.

Hone Your Filing Strategy

In summary, recent case law indicates that the requirements on distinctiveness of position marks filed in Germany seem to be less strict than under the CTM system. Applicants should consider filing position marks, if not only, at least also, as national trademarks in European Member States and using these national trademarks as basic applications under the Madrid System, if required. As illustrated above, given the more stringent examination requirements, it might prove to be the wrong decision to file position marks as CTMs with OHIM exclusively.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.

© 2016 International Trademark Association