In July 2017, the EU’s General Court ruled that tyre manufacturer Pirelli’s application to register the curved stripes that appear on the sides of its tyres was rightly refused as an European Union trademark (EU TM). Pirelli applies the stripes in the same position on its tyres, albeit in different colours; however, the general court rejected its argument that this ‘position’ trademark had acquired distinctiveness through use.

A brand name or logo must fulfil certain criteria in order to be registrable as a trademark. In particular, it must have ‘distinctive’ character, in order to enable the relevant public to distinguish the marked goods and services as belonging to the specific undertaking, as opposed to goods and services originating from other undertakings. If a mark does not fulfil these requirement a trademark application will be refused or, if a trademark right has been granted, the registration can be challenged and potentially revoked.

The acquired distinctiveness exception

If a sign is initially ruled unsuitable to be registered as a trademark, it could still be eligible for trademark protection at a later date by acquiring distinctiveness through use. ‘Acquired distinctiveness’ can apply where the trademark has become widely recognised through long-term or intensive use; in other words, the sign has begun to function as a distinguishing sign, and thus as a trademark. However, acquired distinctiveness can be challenging to prove; in particular for very simple marks, such as that of Pirelli.

Pirelli's ‘position’ mark

The General Court’s recent judgement relates to a ‘position’ mark application filed by Pirelli in October 2014 (pictured below right).

In it, Pirelli had sought protection for products in class 12, namely different tyres, as well as rims and covers for vehicle wheels. The sign was described by Pirelli as: “A pair of essentially equal curved stripes positioned on the side of a tyre and running along its circumference. The trademark in question is a position mark.”

The examiner at the EU Intellectual Property Office (EUIPO) refused the application on the grounds of non-distinctiveness and Pirelli appealed, first to EUIPO's Board of Appeal, and then to the EU’s General Court.

In its decision, the General Court found the mark, as applied for, to be an extremely simple and basic geometric form. It also found in favour of the Board of Appeal's statement in its own ruling that the mark is: “in essence a rectangular, long, thin shape, which appeared to be curved because it was affixed to a tyre’s sidewalls”.

The fact that the relevant public of Pirelli car tyres, in addition to regular consumers, also consists of professionals with a high level of attention does not rule out that the mark applied for has insufficient distinctive character. Instead the General Court found that the distinctive character of the sign is so minimal that it would not be insufficiently able to identify the tyre as originating from Pirelli, regardless of the level of attention of the public. Pirelli was also found not to have proved its claim on acquired distinctiveness.

Registering ‘position’ marks

Position marks can be a challenge for brands to register and to enforce. The red tab on Levi’s jeans is one of the few such marks to have been upheld in recent years. In that case, the courts accepted that the mark, though simple, had acquired the necessary distinctiveness through use.