On 2010,  the German company Steiff, the well known soft toy manufacturer, applied for two positional  Community Trademark applications consisting of  (i) a gleaming or matt, round metal button fastened to the middle of the ear of any soft toy and  of (ii) a rectangular, elongated fabric tag fastened to the ear of a soft toy by means of such button , both in Class 28 as detailed below:

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The Office for Harmonization in the Internal Market (OHIM) rejected both applications  stating that they were devoid of distinctive character since they are unable to allow consumers perceive them as an indication of commercial origin of the relevant goods, that is to say these positional marks do not immediately inform consumers that the product is a Steiff soft toy.

Steiff appealed both decisions before the General Court that confirmed that both applications lack of distinctiveness declaring that “As ‘positional marks’ they are necessarily indissociable from the appearance of the soft toys, since, without the fixation of the button and the label at a precise point, they do not exist. Moreover, buttons and small labels constitute one of the normal component parts of soft toys”. In addition to this, the Court  holds that “this configuration will be perceived by consumers as a variation of the possible fixation of a button or of the label and the button on other parts of the same products or even a variation of other possible decorations attached to their ears. Therefore, consumers cannot presume it to be an indication of commercial origin.”

See whole decisions T 433/12 and T 434/12

This decision confirms the ECJ case law which rejected several position marks that were also found to be devoid of any distinctive character, such as the shoelaces with the red tip. However, the OHIM surprisingly accepted the registration of some other position marks without issuing any provisional refusal based on Article 7.1 b) CTMR within the examination period (Red Tractor).

Notwithstanding and as a general rule, the common practice followed by the OHIM consists in accepting position marks provided the owner submits sufficient evidence showing the acquired distinctiveness through its intensive use in the course of trade as for example the flag label of Levi’s jeans  or the red sole of Christian Louboutin.

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