Trade marks constituted by the shape or an integral part of the relevant product will not be registrable unless they depart significantly from the norm or customs of the relevant sector.
This was emphasised in the case of X Technology Swiss GmbH v OHIM, Case T-547/08, where the EU General Court upheld the refusal of an application for a “positional mark … characterised by an orange colouration, of the shade ‘Pantone 16-1359 TPX’, in the form of a hood covering the toe of each article of hosiery.” Click here to see it reproduced.
This application was refused on the basis that the mark was devoid of distinctive character. The EU General Court confirmed that a trade mark will only have distinctive character if it can identify the products or services for which it is applied for as originating from a particular undertaking and distinguish the products or services from those of other undertakings. Distinctive character must be assessed by reference to the relevant products or services and the perception which the relevant public has of them.
This perception will be influenced by the nature of the relevant trade mark in question. If average consumers are not in the habit of making assumptions as to the commercial origin of goods on the basis of trade marks which are indistinguishable from the appearance of the goods themselves, these marks will be distinctive only if they depart significantly from the norm or customs of the sector.
The EU General Court held that, given the absence of any significant divergence from the norms or customs of the hosiery sector, the trade mark in question would be perceived by the relevant public simply as a decorative element and it was therefore devoid of any distinctive character.