Position Marks 7th Liaison Meeting on Trade Marks Sabine Link German Trade Mark and Patent Office

With the help of 4 examples the following legal questions will be discussed: Is it possible to register position marks also for services? What is the difference between a position mark and a figurative mark or a 3D mark (advantages)? What requirements must be met by the description? When is a position mark distinctive?

Definition “A position mark is a sign which is placed on a definite part of a product at the same position in constantly identical shape and size“

The position mark consists of the sign itself (figurative mark, three-dimensional mark etc) the “carrier” of the position mark (may be abstract, then a sketch is sufficient) the position of the trade mark on the “carrier”

Description: Concrete position must be defined by a description (may also be proportional) Description is obligatory for the application

Position marks for services ? The German Office assumes that position marks for services are in principle possible. Wording of Art. 2 Trade Mark Directive “open concept of trade mark”

Position mark “Umweltaktivisten” (environmental activists) Description: Position mark for two green colour stripes as specified by the representation. The green colour stripes are applied to the person‘s face, more precisely, on the right side as well as on the left side of the face, with each colour stripe running from the cheekbone to the side of the nose, and stopping 2.5 cm short of the side of the nose. The colour stripes vary in width between 1.2 cm and 1.6 cm. The other broken lines discernible on the graphic representation of the trade mark only serve to indicate the position of the colour stripes on the face of the person (regardless of age or sex) and do not constitute elements of the trade mark.

Position mark “Umweltaktivisten“(environmental activists) for class 41 “Organisation and operation of cultural events, in particular to promote public awareness of the need to protect the environment and the climate” Trade mark was registered by the German Office

Position mark “Umweltaktivisten“(environmental activists) By registration as a position mark the trade mark can be used for any human face (and also any skin colour) because the “carrier” is only abstract (“human face”). Therefore the scope of protection is broader than for a figurative mark.

Position mark “Button in Ear” (Steiff toy animal) Description: It constitutes a position mark: Trade mark protection is claimed for a round, shiny or satin finish metal button, affixed in the central part of the ear of a toy animal. The button is considerably smaller in size than the ear so that the ear protrudes beyond the button on all sides. The ear of the toy animal varies in shape and size and does not form part of the claim for protection. The dotted lines do not constitute elements of the mark, but are merely reproduced to indicate the position of the trade mark on the products. The shape of an animal head represented by dotted lines only serves as an example and does not aim at limiting the scope of protection of the trade mark to this shape of animal head. Trade mark was registered by the German Office for toy animals (class 28).

Position mark “petrol station“ Application for i.a. services of a petrol station The German Office regards the trade mark as eligible for protection. Since colours in connection with petrol stations are perceived by the relevant public as an indication of origin (so-called corporate colours).

Orange colouring of the toe of a sock    ECJ – X Technology Swiss (C-429/10P) Orange colouring of the toe of a sock Application for a Community trade mark as „other mark – positional mark“ for „clothing, namely hosiery, socks and stockings“. Description: „The positional mark is characterised by an orange colouration, of the shade „Pantone 16 1359TPX“ in the form of a hood covering the toe of each article of hosiery. It does not cover the toes entirely; it features a limit, which, viewed from the back and the side, appears essentially to be horizontal. The mark always appears in sharp colour contrast to the remainder of the article of hosiery and is always in the same place.“

ECJ –Orange colouring of the toe of a sock Findings of the Court: The perception of the relevant public is, however, liable to be influenced by the nature of the sign in respect of which registration is sought. Therefore, 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 only if they depart significantly from the norm or customs of the sector.

ECJ –Orange colouring of the toe of a sock The decisive factor governing the applicability is not the classification of the sign as figurative, three dimensional or other, but the fact that the sign is indistinguishable from the appearance of the product designated. In those circumstances, it is necessary to determine whether the mark applied for is indistinguishable from the appearance of the product or whether, on the contrary, it is independent thereof. According to the information provided by the applicant, the mark is designed to protect a specific sign placed on a specific part of the surface of the designated product. Thus, the mark is indistinguishable from the form of a part of that product, namely the shape of the toe of an article of hosiery.

ECJ –Orange colouring of the toe of a sock With regard to the relevant public´s perception the colouring of the toe of an article of hosiery would be perceived either as decoration or as a functional element connected with the reinforcement of the toe. Due to the absence of any significant divergence from the norms or the customs of the hosiery sector the mark applied for would be perceived by the relevant public as a decorative element and is for that reason devoid of any distinctive character.

Thank you for your attention.