Swiss trademark law and practice recognises various types of registrable trademark. Word and figurative marks are registrable, but so too are non-traditional marks such as colour, sound and three-dimensional marks, provided certain conditions are met. Another permitted, albeit less popular, type of trademark is the position mark. A position mark is characterised by an element which is always placed on a specific part of a product, in constant proportion to that product. Such a mark does not offer protection for the sign as such, but rather for the specific position of the sign on the product.
On March 11 2013 the Federal Administrative Court offered guidance on the registrability requirements for position marks. The position mark for which US shoe manufacturer K-Swiss sought registration showed five stripes placed in a specific way on the outer part of sports and leisure shoes.
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?In its complaint to the Federal Administrative Court, K-Swiss opposed the presumption of a lack of distinctiveness, as the average customer would in fact consider the positioning of this sign as an indication of origin. K-Swiss held that customers are used to signs placed on the outer part of shoes indicating product origin and referred to the well-known Adidas three-stripe mark. The Swiss Institute of Intellectual Property had previously refused to register this position mark. It considered the graphic design of the mark to be trivial and held that the sign's positioning was attributable to purely technical features (increasing the stability of the shoes) and therefore belonged to the public domain.
Consequently, the crucial question to be decided by the court was whether the sign in question, together with its positioning on the shoes, was to be considered distinctive. In its decision, the court first set out the general qualifications that a position mark must fulfil in order to be registrable. A sign's positioning is distinctive when customers do not consider the specific place on the product to be a usual position for a mark. Accordingly, extraordinary or striking positions generally lead to distinctiveness and thus to the registrability of the mark. This may also be the case if the position of a mark has acquired distinctiveness by use.
The court further noted that the case law developed for shape marks (ie, three-dimensional marks reflecting forms of products or packaging) can be applied equally to position marks if these marks are part of the appearance of the products themselves. The court was of the opinion that the five stripes of K-Swiss were perfectly adjusted to the shape of the shoe and could not be separated from the product. It qualified the sign as a "partial shape mark" and thus referred to the practice developed for shape marks – according to which shapes that are dictated by the product's technical function or purpose cannot be protected, as the relevant public would not perceive such signs as an indication of the product's commercial origin.
Without further reflection, and despite the fact that the stripes taken in isolation were considered to be in the public domain as they were just basic geometric forms, the court held that the K-Swiss sign was registrable based on the overall impression of the position mark. It noted that position marks may be registered even if the sign alone cannot be registered as an ordinary word, figurative or shape mark due to the lack of distinctiveness. What is required in such cases is that the combination of the sign and its positioning have distinctive character. The crucial point in this case was that the attention that an average customer pays to signs placed on that specific outer part of sports and leisure shoes is very high. This stems from the famous Adidas stripes, which are positioned on exactly the same part of the shoe. Thus, customers are used to considering signs in this position as indications of the commercial origin of goods.
The court held that the position mark was to be considered inherently distinctive and so the Swiss Institute of Intellectual Property was obliged to register the respective K-Swiss position trademark. This decision is an important step towards effective protection of position marks in Switzerland.
For further information on this topic please contact Sylvia Büchi or Roger Staub at Froriep Renggli by telephone (+41 44 386 6000), fax (+41 44 383 6050) or email (email@example.com or firstname.lastname@example.org).
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