In two parallel cases, the German Federal Patent Court has ruled that the positioning of a bottle or tube on a car roof could not be registered as a position sign as the sign lacks distinctiveness.
The applicant had applied at the German Patent and Trade Mark Office for trade mark protection for the two position signs shown above for a large number of procurement, consulting, sales and transport services in connection with medicinal and pharmaceutical products and services in classes 35, 39, and 44:
Enclosed with the applications were descriptions specifying the positioning of the bottle/tube on the car roof and the relevant size in millimetres.
The GPTO refused the applications as non-distinctive and belonging to the public domain, on the ground that the positioned signs were common top displays on cars and their design and positioning was not sufficiently unconventional and distinct.
On appeal, the Federal Patent Court upheld the GPTO’s decision, ruling that although the signs applied for, in conjunction with the accompanying illustrations and descriptions, did meet the formal requirements for a position mark, the signs were not sufficiently distinctive from an overall perspective and taking into account the custom of using car top displays. Neither the positioned signs (bottle/tube) themselves nor the positioning (on a car roof) nor the combination of the two could serve as an indication of origin, for the bottle/tube was of ordinary design and not uncommon in connection with the services applied for, which related to pharmaceutical products. The positioning of an advertising display on a car roof was likewise in line with common practices and was the only way of use permissible under road traffic regulations. Finally, the combination of the two was not uncommon either, and the relevant trade circles were accustomed to the fact that in such cases the indication of commercial origin was always effected through the lettering on the display rather than its positioning as such.
The decision constitutes a helpful summary of the registration requirements for position signs in Germany. Applicants interested in a position sign are thus given guidance that should be followed in designing a position sign so as to avoid any bars to protection and any refusals.