Another Unsuccessful Attempt to Register a Positional Trademark

Author: Inga Lukauskiene, Associated Partner, Attorney-at-Law, Patent Attorney at METIDA

Paradoxically, although, under the trademark law, any mark represented graphically can be registered as a trademark, the positional marks often become the subject of legal disputes.

A German company Sartorius Lab Instruments GmbH & Co. KG. KG attempted to register a positional mark for various goods related to the electronic screen in classes 7, 9, 10 and 11. According to the applicant, the mark consists of a yellow bow extending over the entire widths at the bottom of an electronic display unit. The dashed contours appearing in the application were drawn in order to show that the bow is on the electronic screen and were not part of the trademark application.

Screen Shot 2014-05-15 at 11.58.50

This type of marking is generally consistent with the requirements for a trademark, since its purpose is to mark specific goods to distinguish them from another manufacturer’s goods in accordance with the specific marking. However, according to the OHIM, all the goods listed in this particular trademark application are in the connection to the electronic screen, thereby, the relevant public, i.e. industrial and technical specialists, will perceive the mark merely as a screen decoration. Particularly, the OHIM argues that the displayed form does not not give any indications to the product’s manufacturer. Therefore, they concluded that this mark was devoid of a minimum degree of a distinctive character, mandatory for the mark’s registration as the Community trademark.

The applicant did not convince the General Court either. The court upheld OHIM’s decision to decline the registration of this mark, even though the applicant argued that the relevant public would perceive their mark as original and with a minimum degree of a distinctive character sufficient to allow the mark function as a trademark, rather than consider it as a purely decorative element.

The court drew attention to the rules developed by the case law which should be applied in this matter:

  • the nature of the mark subject to registration may influence the relevant public’s perception. If an average consumer is not in a habit to deduce the commercial origin of the goods from marks resembling the appearance of these goods, such marks are considered to have a distinctive character if and only if they are very different from the norms or customs of the relevant sector.
  • it is that the mark coincides with the appearance of the product it denotes, rather than its classification as a figurative, three-dimensional or other type of trademark, that determines its registration. Specifically, this criterion stands not only for the three-dimensional trademark, but also for the figurative trademark consisting of the two-dimensional image of the product it denotes, as well as for a mark containing motives displayed on the product. According to the case-law, only in exceptional circumstances, i.e when they coincide with the appearance of the goods they denote and are not used to indicate the commercial origin, the colours and their abstract combinations may be recognised as having their own distinctive characters.

Under the Court’s decision, the yellow bow indicated in the trademark application adapts to every form of the good it denotes and highlights its contours. Hence, it appeared that the trademark in question coincides with the appearance of the product it denotes.

Based on the evidence submitted by the applicant, the Court also found that it is not unusual to provide a colourful element around the screen of these goods, be it on buttons next to the display unit or in a distinctive color on the framing of the display unit itself. Thus, the consumer should be accustomed to seeing the coloured motives on the goods indicated in the trademark application, therefore, they would be likely to perceive them as a decorative element, rather than a reference to the commercial origin of these goods. In fact, the manufacturers generally supply their name there in order to indicate the origin of the goods. The court also ruled that the placing of such coloured “visual references“ around the device’s screen is not an unusual phenomenon in this sector. Moreover, the applicant did not claim that the disputed trademark is of a particular shade of yellow. Therefore, the trademark is devoid of any original or unusual character.

Of course, in this case, the trademark applicant may seek registration of this mark by trying to prove an acquired distinctive feature. However, the applicant did not provide this kind of evidence. Perhaps they still do not mark their measuring equipment in such a way.

To summarise, the happy end in the history of the positional marks is still to come. These marks are likely to be registered not on the grounds of the distinctive character, but by proving that the distinctive character is acquired through intense and long-term use, due to which the consumers relate the goods they denote to their appropriate manufacturers, rather than regard them as a purely decorative element.

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