Some trademarks become distinctive not because of their originality but because of their position on a specific product.  Although position marks can be accepted for registration by the Office for Harmonisation in the Internal Market, they tend to run into refusal by the General Court and the European Court of Justice. This also happened to an application for a position mark consisting of two parallel slanted stripes positioned on the lower part of panel pants.

This article first appeared on WTR Daily, part of World Trademark Review, in January 2016. For further information, please go to www.worldtrademarkreview.com.

In Shoe Branding Europe BVBA v Office for Harmonisation in the Internal Market (OHIM) (Case T-64/15), the General Court has dismissed Shoe Branding Europe BVBA’s appeal against a decision of OHIM refusing protection to a position mark.

Shoe Branding filed an application for registration of a Community trademark for goods in Class 25 of the Nice Classification (“clothing, namely pants for sports and leisure”) for the following sign:

Click here to view sign.

Position mark

In the application form, the mark was described as follows:

“The trademark is a position mark. The mark consists of two parallel slanted stripes of equal width positioned on the lower part of panel pants. The dotted line marks the position of the trademark and does not form part of the mark.”

OHIM refused protection for the mark in its entirety pursuant to Article 7(1)(b) of the Community Trademark Regulation (No 207/2009). Shoe Branding’s appeal was dismissed by the Fifth Board of Appeal of OHIM, against which decision Shoe Branding appealed again. The General Court dismissed the appeal, as a result of which OHIM’s decision to refuse registration of the mark is upheld.

Distinctive

The General Court established that the Board of Appeal had correctly observed that the pattern at issue was extremely simple and, as such, lacked a distinctive character. The Board of Appeal was also correct to consider that the applicant had not established that such a pattern would acquire a distinctive character from the fact that it was affixed, at a certain angle, to a specific part of the pants.

The applicant argued that the two stripes are placed along the lower lateral side of a pair of pants, that they are distinct lines that seem to come alive when the person who wears the pants moves and that these lines are inclined relative to the axis of these pants. This, according to the General Court, was not likely to distinguish that pattern from other purely decorative patterns which can be used on the products at issue. The applicant did not provide sufficient evidence to establish that the mark applied for had an inherent distinctive character. The Board of Appeal was thus correct to conclude that the sign was not capable of constituting, for the average consumer, an indication of the commercial origin of the products at issue.

Geometric shapes

Concerning the evidence that Shoe Branding had produced to establish that sportswear manufacturers use simple geometric shapes as trademarks, the General Court decided, among other things, that:

  • even if certain simple geometric shapes would enable the average consumer to establish a link between the products and a specific manufacturer, the distinctive value of those signs owes less to their simplicity and their positioning on the product than the intensive use which has been made of those signs elsewhere on the market;
  • the evidence was insufficient to establish, given the ordinary nature of the sign at issue, that the average consumer would regard the sign as an indication of the origin of the products at issue and not as a mere decorative element; and
  • accepting that any geometric shape, including the simplest one, has a distinctive character because it is affixed at a certain angle to a particular portion of the side of a pair of sport pants would result in some manufacturers being able to appropriate simple, primarily decorative, shapes, which must remain accessible to all, except where the distinctive character of the sign has been acquired through use.

This decision underlines that being able to support an application with evidence of inherent distinctive character or acquired distinctiveness through (intensive) use is key in convincing OHIM that the relevant public will perceive position marks as indications of origin, rather than mere aesthetic details of the products at issue.