Authors: Kristina Vilkiene, an assistant to attorney-at-law at METIDA and Inga Lukauskiene, an associate partner, an attorney-at-law and a patent attorney at METIDA
Some of the marks used in the labeling become distinctive not because of their originality but due to the way they are positioned on a particular product. These marks are indeed positional trademarks. Neither the Community’s legislation nor the national legislation define the concept of these trademarks, however there is a presence of them in practice. Hence, what sort of a mark do we have in mind and can it be registered as well as protected as a trademark?
The positional trademark ensures the protection of the mark on a particular object which cannot be registered as a separate mark. Such mark is of an appropriate size or proportions positioned on the specific area of the product (for example, in the middle of the product or represented as a silhouette).
Council Regulation on the Community trademark indicates that the Community trademark can consist of any signs which can be represented graphically and can provide a clear distinction between one company’s goods or services from another company’s goods or services, particularly words, including individuals’ second names, designs, letters, numbers, the image of goods or their packaging. This list is by no means exhaustive.
Taking into account this wording, the positional mark could also be seen as a sign potentially constituting a trademark. However, due to its depicting features this type of mark is attributed to the category of non-traditional trademarks. Yet, although the positional mark by its nature is similar to a figurative or a three-dimensional trademark, it differs from it in terms of the importance of the mark’s positioning on the product. In other words, unlike for the three-dimensional mark, mark’s position on a particular object is a crucial factor for the positional trademark
Thus, since the only formal requirement for the positional trademark is to portray it graphically, a detailed and clear description of the position of the positional trademark on a particular product becomes essential for the application of trademark registration. Therefore, when filing an application it is necessary to specify a product (providing drawings) and clearly indicate the position of the positional mark. Since the specific positional trademark is or will be used on several homogeneous objects, it is also important to include both the graphical representation of the position of the mark and the additional information explaining the relationship between a particular object and the positional mark. Neither the whole depicted form nor the mark can be separately protected as a trademark. However, the mark placed on the specific position of the product is indeed protected.
And thus, the distinctive feature of this mark is precisely the specific position of the object. Thus, although the positional mark is similar to the three-dimensional mark, it cannot be used as the mark when not refferring to an appreance of a specific product.
When assessing whether the positional mark may be registered as the trademark, the following aspects must be taken into account:
- Position. The particular positioning of the mark can be considered as an indication of origin only in cases when its positioning is unusual subject to a particular market. It is important to find out whether a consumer expects the mark to be usually displayed in the specific position of the product
- Mark. If it is regarded only as a decorative element, the average consumer will not evaluate the mark as the indication of origin. Consequently, the mark will not have the distinctive feature.
After analysing the protection of marks of this kind, the Working Group of the World Intellectual Property Organisation (WIPO) indicated that an individual image of the mark must be in the presentation of this mark. The object for which the protection is not sought has to be shown by the dashed or dotted line. If a graphical representation is not clear enough, the registration authority may require a written statement which would clarify the position of the mark in respect to the product.
WIPO regard a positional mark as a constant element of an identical size placed on the product in the fixed position. Particularly, the composition of this mark and its position comprise a distinctive feature of a positional trademark even though the position itself cannot be registered as a trademark.
The Office for Harmonisation in the Internal Market (OHIM) register positional trademarks together with Community trademarks. However, it is worth noting that the first positional trademarks were registered as figurative trademarks.
On 28th September 1999 Thomas Groß filed an application to register a trademark shown below as a figurative trademark for 25 class of goods which is “shoes, especially sports and leisure shoes”.
The expert refused to register this trademark stating that it does not have any distinctive feature, because the vast majority of sports and leisure shoes on the market have stripes on the sides, and the shoe image and design on the application do not differ from other shoes on the market.
The applicant challenged this expert’s decision stating that the stripe layout and its position on a shoe are not ordinary. In addition, they indicated that such positional trademarks are recognised and registered by the German national offices, therefore the refusal to register it as a Community trademark would result in violation of the EU’s law harmonisation principle.
OHIM Boards of Appeal stated that the mark filed to be registered is basically a figurative trademark even though both the applicant and the expert consider it as the positional trademark. The Boards of Appeal returned the application for re-examination and in the end the mark was registered as the trademark.
Afterwards, more attempts have been made to register marks’ positions on products as positional trademarks. Recently, the General Court in its 11/07/2013 decision upheld the decision made by the Boards of Appeal of OHIM in Think Schuhwerk GmbH vs. OHIM case which prohibited registration of the positional trademark for the shoes. Neither the Regulation on the Community trademark, nor the Implementing Regulation mention positional trademarks as a separate trademark category. The General Court had already stated that the positional trademarks must be regarded similar to the figurative and three-dimensional trademarks, since they are related to figurative or three-dimensional elements’ application on the surface of goods.
Hence, this suggests that the positional trademarks can be generally registered if they comply with the criteria set out in the Regulation on the Community trademark. However, there is no clear and universally acceptable positional trademark concept. Only a few positional trademarks were registered and the majority of applications of such trademarks were rejected.
In the following case, the General Court considered the registrability of the positional trademark exemplified below and formulated the basic problem: when registering the positional trademark it is crucial to display the product and indicate a positional trademark on it. As the picture shows, the postional mark on shoes was analysed in the case.
Protection was asked for laced-up shoes whose laces’ ends are red. In this case, since the displayed shoes represent a common model in the market, no disputes occurred arguing that the image was descriptive or lacked a distinctive feature. Yet, a key issue in assessing the registability of the trademark was whether the red ends of shoe laces are sufficient indicators for the consumers to distinguish these shoes from the shoes produced by the other manufacturers. The General Court of Appeal upheld the decision made by the the Boards of Appeal to refuse to register this trademark due to the lack of a distinctive feature.