Author: Inga Lukauskiene, Associated Partner, Attorney-at-Law, Patent Attorney at METIDA
An attempt to register and obtain the protection of non-traditional trademarks still remains a daunting task and courts’ decisions are tough in respect of this matter. Due to their depicting attributes, positional trademarks are one of the trademarks belonging to the non-traditional trademark category. They are used on specific objects and cannot be registered as separate trademarks.
A positional trademark is a mark of a certain size or proportions that is placed on a particular product in a certain position (e.g. in the middle of the product or displayed as a silhouette). In order to register the positional mark as the trademark, the following two aspects should be taken into account:
1) place: the mark can be treated as an origin indication only if in a particular market mark‘s positioning is considered unusual. In other words, it is important to find out whether the position of the mark can be predicted by a consumer.
2) mark: if the mark is treated only as a decorative element, an average consumer will not perceive it as an indication of origin, thereby, the mark will be considered as not having a distinctive character.
That the process of registering non-traditional trademarks cause difficulties can also be shown by OHIM Boards of Appeal‘s decisions regarding two Community trademark applications which on 16th January, 2014 were upheld by the European General Court. The General Court held that, due to the lack of a distinctive character, Margarete Steiff is not entitled to receive the Community trademark protection both for a button affixed to the middle of teddy bear’s ear and a label affixed to the teddy bear using the button.
In 2010 a German company Margarete Steiff, which is a famous high-quality toy manufacturer, filed two Community trademark applications for goods in class 28. The applicant requested the positional trademark protection for the following elements: a) a shiny or matte, round metal button, which is attached to the middle of a soft toy’s ear, or b) a rectangular, long label affixed to the shiny or matte, round button in the middle of teddy bear’s left ear.
OHIM Boards of Appeal rejected both applications on the grounds that the marks do not have a distinctive character and thereby, an average consumer will not consider them as the indication of origin. Margarete Steiff appealed against the OHIM Boards of Appeal‘s decision to the European General Court. In view of this appeal, the Court stated that due to the characteristics typically attributed to positional trademarks, a product must be indicated by depicting a positional mark and thereby, the marks applied for registration would not exist if the button or the label were not fixed to a particular product’s part. The court also argued that it is normal for the buttons and labels to be attached to plush toys, therefore, consumers are accustomed to the fact that these items are attached to a variety of stuffed toys present on the market. The position of buttons attached to the middle of teddy’s ear or labels affixed using a button cannot be regarded as exceptional, as an average consumer will not perceive them as the indication of origin. The court held that in this case the marks would be seen only as decorative items of the plush toy.
Margarete Steiff argued that they were the only manufacturer having used the button attached to the ear of the teddy bear for more than 100 years. Nevertheless, according to the Court, the fact that this specific company is the only one that has been using this mark for a certain period of time is not relevant in assessing the distinctiveness of the mark. The criteria of novelty and originality are also not important for this. In fact, the key criterion for determining the distinctiveness is to identify if the average consumer will perceive the mark as the indication of the product’s origin.
This court’s decision once again confirms that non-traditional trademark registration is very complex. So far, case law has been very strict on this topic: only a few positional trademarks were registered and most of the applications were rejected. Please note that the positional trademarks may be registeredonly in cases where they meet the criteria designated by the Regulations on the Community trademark. Also, the product must be indicated by depicting its positional trademark which the average consumer will perceive as a distinctive character and the indication of origin.