The Court of Justice of the EU recently clarified the criteria to take into account when assessing the distinctive character of a position mark applied for in respect of services, in this case passenger transport services (CJEU Östgötatrafiken judgment, Case C-456/19).
Since 2003, the Swedish urban transport company Östgötatrafiken has held several figurative trade marks, which it affixes to its vehicles. In 2016, it applied for three new trade marks, described as “position marks”, consisting of coloured ellipses of different sizes placed in a certain position on buses and trains.
The Swedish Trade Mark Office refused registration on the ground that the shape and colours of the signs did not depart significantly from those used by other transport undertakings on the market to decorate their vehicles, meaning they would not be perceived by the public as an indication of origin. The Stockholm trial court confirmed the refusal of registration.
At the appellate level, however, the Stockholm Court of Appeal sought a preliminary ruling from the Court of Justice, as it was reluctant to apply to services the strict criterion used to assess whether the shape of a product is distinctive, namely whether it constitutes a significant departure from the standard or habits of the sector. In this case, the coloured motifs are affixed in a particular way to buses and trains used to provide transport services, but the shape of the vehicles is not per se the subject of the trade mark applications.
The Court of Justice confirmed that the public perceives the coloured motifs as being affixed to the vehicles, which serve as their exclusive medium, and that this perception must be taken into account. However the Court held that “it is not necessary to examine whether the signs for which registration as a trade mark is sought depart significantly from the norm or customs of the economic sector concerned”. The signs at issue are not indissociable from the shape or packaging of the goods, nor do they represent the layout of a physical space in which services are provided (as was found to be the case with the interior of an Apple store; Case C-421/13).
Therefore, it is now up to the Stockholm Court of Appeal to reassess the signs in question, without taking into account the criterion applicable to three-dimensional trade marks wrongly applied to the signs at stake by the Swedish Trade Mark Office and the lower court.