RIDEAU Camille

POSITION MARK
A category of signs eligible for trade mark protection?
Different standards of examination, different scope of
protection?
Camille RIDEAU
M2 Valorisation des Biens Immatériels -CEIPI- 2009/2010
Sous la direction du Professeur Yves Reboul
2
Remerciements:
•
A Mr le Professeur Yves Reboul pour le temps qu’il m’a accordé, ses explications et son
aide qui m’ont été très précieuses
•
To Mr Gregor Schneider for giving me such an interesting subject and for his presence
during the OHIM presentation.
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SOMMAIRE
Introduction
I) the role of the position of the sign in the trade mark right constitution
A) Existence of a positioned (positionable) sign
B) The distinctiveness of a positioned sign
II) The role of the secondary meaning (use of the mark as a mark) in the
effect of the right determination
A) The position of the sign’s influence upon the infringement
B) Influence of the secondary meaning upon the loss of right risk
4
T
he notion of “position mark” was born in Germany. German lawyers consider that the
subject-matter of the position mark is “the special kind to arrange or to place a sign on
the product”1.
The position mark is required when the sign alone can’t be registered as a trademark.
The German doctrine gave birth to this notion to protect this kind of sign as mark. Hence, if the
sign by itself is capable of being protected, the position mark is not needed (for example the sign
“coca cola” don’t need a special positioning for being protected) and the application as a
position mark makes sense when it is the only way to reach the protection of the sign.
To resume the German understanding of the position mark, it is a sign, positioned on a special
part of the product in a constant size or in a special proportion to the product (for example: in a
relative distance to the middle of the product) or silhouetted against the product (for example in
a special contrast).
If we have a look on the article 4 of the Community trademark regulation (CTMR),
we can notice that a comunity trade mark may consist of “any signs capable of being
represented graphically, particularly words, including personal names, designs, letters,
numerals, the shape of goods or of their packaging, provided that such signs are capable of
distinguishing the goods or services of one undertaking from those of other undertakings”.
This article establishes a list of the principal categories of trademark (for example word mark or
figurative mark). But this list is not exhaustive as the word “particularly” evidences.
The position mark can be classified as a type of trade mark listed in Art. 4 CTMR. Partly
the position mark is acknowledged as a new type of trade mark (non traditional trademark). As
an argument, to consider that the “position mark” is not only a classical 3-D or figurative mark
and that it is a new category of trademark, we can say that additional to the sign, the positioning
on the product is an essential detail. Indeed, the scope of protection of the word mark, figurative
mark or 3-D mark, doesn’t involve the special position.
Moreover, the only formal requirement is the capability for the sign to be represented
graphically. That’s why, the arrangement of the position of the sign on the good must be
determined in the application.
But here again, the “position mark” can’t be represented in the same way like word or
figurative mark. Indeed, the graphical representation can just reach a maximum of
harmonization for example by filling pictures of the sign on each possible good for which the
trade mark should be protected.
1
Helena Haupt
5
For example referring to the position mark “Button on the ear”2 the applicant would have to fill
in pictures with the sign “the button” of all possible kind of animals – that is not possible!
Hence, the graphical representation can only be reached with an additional description. The
relation between the sign and the position must be explained in the description. It must be
pointed out, that neither the whole depicted shape nor the sign alone is the protected trade mark
but protected is the sign in a special position on the good3.
It is the trademark and its special positioning which have distinctive force. Here, like the other
figurative mark the level of attention depends of the relevant category of addressed persons.
Even if it is similar to the 3D mark, the position mark does not consist in a sign which is
completely independent from the appearance of the marked good.
The examination should happen within two aspects:
-The position: only if the positioning is unusual and not customary in the particular
market, it can be considered/regarded as indication of source. To examine the position, we have
to wonder whether the consumer expects that a sign is usually positioned on a special place on
the product.
-The sign: if it is recognized just as a decorative element, the average consumer doesn’t
consider it as indication of source; the sign has no distinctive character.
The consumer is not used to expect an indicator of source in a just decorative element. Then, if
many undertakings use similar signs in a decorative way, the consumer usually doesn’t
recognize the sign as indication of source. It will be examined, if the consumer notices the sign
as badge of origin.
This is my understanding of German doctrine.
However, the position mark is not only a specific concept to this country. At the world’s level,
the WIPO took charge of this concept analysing different countries understandings. In the
Singapore Treaty, there is a reference to the concept of “position mark”. Nevertheless there is
no clear definition.
But if we look at the document on the WIPO web site, we can find some which give us many
indications.
2
cf. in the appendix the graphical descritption of this mark
3
cf. appendix
6
Indeed, a working group, on the review of rule 3(4) to (6) of the regulations under the Singapore
Treaty on the law of trademarks, mentions the “position mark” in a document4.
Hence, the Rule 3(5) provides that where the application contains a statement to the
effect that the mark is a “position mark”, a Contracting Party may require one or more
reproductions of the mark and details concerning the mark as prescribed by the law of that
Contracting Party. Refering to a note made by the WIPO about the area of convergence of this
kind of mark5, the group explain that according to the several law systems, a position mark can
be a subset of other types of marks, such as figurative or three–dimensional marks.
Nevertheless, the WIPO added that, “the reproduction of this mark shall consist of a
single view of the mark. Matter for which protection is not claimed shall be represented in
broken or dotted lines. If the graphic representation supplied is not sufficiently clear, the Office
may require a written description explaining the position of the mark in relation to the product”.
Here, the most important aspect of the “position mark” seems to be the graphical representation
of the trademark.
More generally (and not in the Singapore Treaty limits) the WIPO considers that the
position mark is “characterized by an immutable element always placing on the product in the
same position and in constant proportion”. It is the combination of the sign and of the
position which can convey the distinctive character. But the position itself can’t be registered as
a trademark. If the sign is not distinctive alone, we should appreciate the continual and perpetual
position influency. The sign for which the protection is sought for, regarding to its position, is
not distinguishable from the appearance of the product itself. That’s why, the beneficiary of the
sign should consider it, more like a ornemental or technical element than like an indication of
origin. But a sign will be distinctive if it differs from a comon place representation of the
product designated. Here, the WIPO asserts that placed the sign in an usual place can help to
giving to it a distinctive character, and it will not be the case if the common sign is placed in a
unusal or unexpected position. Here, in this analysis the notion of common sign which devoid a
distinctive character and can acquire it thanks to its position appears and we will develop it in
this subject. It is not the specific position of the sign on the product which is the only particular
aspects of the “position mark”. Indeed, it is also a way to permit to a sign which is quite
common to acquire distinctiveness.
4
Groupe de travail chargé de l’examen de la règle 3.4) à 6) du règlement d’exécution du traité de Singapour sur le
droit des marques, Genève, 28-29 juin 2010
5
Comité permanent du droit des marques, des dessins et modèles industriels et des indications géographiques :
« représentation des marques non traditionnelles domaines de convergence ».
7
However, the WIPO is not the only international organization which has an interest for
the “position mark”. In the OHIM some trademark was registered as “position mark”.
At first, the “position mark” was registered not as a “position mark” but as a figurative
trademark.
It was the case in a decision held by the OHIM Board of Appeal the 7th of May in 20026.
The mark for which the registration was sought, wad the stripes placed in a specific way on
shoes side.
But the first examinator refused to register it because he estimated that the sign was
only a representation of the product itself that is to say a sport shoe. The claiment refused this
analysis and refer the matter to the Board of Appel. She thought that the sign thanks to its
specific layout was distinctive. One of her argument was to say that this kind of mark was
usually registered by the Deutsche Patent- und Markenamt (German office of trademark) and
the OHIM refusal to register it went against the principle of harmonization held by the European
Union. The Board of Appeal finally accepted to register the mark and the intersting point for our
subject is the paragraph 20 of the decision. Indeed, here the Board said that even if the claimant
and the examinator spoke about “position mark” the trademark involved was a figurative mark.
Hence, the fist step of the “position mark” in the word of trademark was hesitant.
Two others “position marks” are particularly interesting because they were the principal
matter of General Court decisions and give us some indications. They are the Lange Urhen
GmbH and the X Technology Swiss GMBH v. OHIM case.
In the first case7, the problem was the OHIM’s refusal to register a mark designated as a
« position mark ». The trademark’s description was expressed like this: “ the dotted lines are not
part of the mark, but are only used to show the trademark position on the product”. The demand
was to declare void the OHIM decision which has applied the 3-D mark case law to the mark
involved.
The claimant asked the application of specific criterion for “position mark”. But the judge
refused it because the “position mark is comparable to the nominative and figurative trademark
and there is no specific exigency required in relation to the distinctiveness”. That’s why a sign
represented on a product or on a part of a product could not be refused from registration because
a lack of distinctiveness in itself8.
6
Board of Appeal, May 7th, 2002, R-938/2000-1
7
CFI, T-152/07, September 14th 2009
8
Arrêt Surface d’une plaque de verre, Glaverbel
8
The judge reminded that in other cases, it had been judged that the rules of the 3-D trademarks
constituted by the product appearance itself are the same when the figurative trademark is
constituted by the bi-dimensional representation of the product. Indeed, in this case the
trademark is not anymore a sign independent from the product designated aspect9.
Although, a position mark is, by definition, a sign which is dependent from the product aspect
and the Court bases its argument on this to settle that the 3-D case law was applicable to the
“position mark”.
Finally, the ECJ here didn’t give a lot of information and explanation about this concept.
Then, the most recent General Court’s case10 gave us more specific elements about the “position
mark” category.
Indeed, also in this case the registration of a “positional mark” was sought. This
mark was “characterised by an orange colouration, of the shade “Pantone 16-1359 TPX”, in
the form of a hood covering the toe of each article of hosiery. It does not cover the toes entirely;
it features a limit, which, viewed from the back and the side, appears essentially to be
horizontal. The mark always appears in sharp colour contrast to the remainder of the article of
hosiery and is always in the same place.” This mark was applied for the class 25 of the Nice
Agreement of 15 June 1957 which consist of the following: ‘Clothing, namely hosiery, socks
and stockings’.
The Board of Appeal rejected the application and one of it argument was that the applicable
rules made no provision for the category of ‘positional marks’. Consequently, the Board
considered that the mark applied for was a three-dimensional or figurative mark.
That’s why, the first part of the plea, alleging an error with regard to the classification of the
mark applied for.
The General Court rejected this plea. Hence, the Court notes that neither Regulation No 40/94
nor Commission Regulation (EC) No 2868/95 of 13 December 1995 refers to ‘positional marks’
as a specific category of marks.
However, the Article 4 of Regulation No 207/2009 does not contain an exhaustive list of signs
capable of being Community trade marks. So a position mark is able to be registered.
9
Arrêts Storck/OHMI, point 67 supra, point 29, et Henkel/OHMI, point 68 supra, point 38
10
GC, June15th 2010, X Technology Swiss GmbH v. OHIM, Case T-547/08
9
The judges said that the “position mark” was similar to the categories of figurative and 3-D
marks as “they relate to the application of figurative or three-dimensional elements to the
surface of a product”.
The fact that the mark involved is a “position mark” is irrelevant for the question asked: the
distinctiveness of the sign applied for. Indeed; the sign here is indistinguishable from the
appearance of the product designated but this criterion is applied for the 3D mark, for figurative
marks consisting of a two-dimensional representation of the product designated (Storck v OHIM
and Henkel v OHIM), or also for a sign consisting of a design applied to the surface of the
product (order in Case C-445/02 P Glaverbel v OHIM [2004] ECR I-6267).
In this case, the mark is applied to protect a specific sign placed on a specific part of the surface
of the product. Thus it is indistinguishable from the form of a part of that product (the shape of
the toe). Accordingly, the view must be taken that the mark applied for is indistinguishable from
the appearance of the designated product and that, consequently, the case-law cited previously
are applicable.
That is to say, the fact that a mark is applied for registration as a “position mark” is not relevant
to look if it is distinctive. But the position mark can be considered as a specific mark
designating one of those sign indistinguishable from the shape of the product.
This essay aims to explain what the position mark is and which the specificities for its
protection are. In other words, the subject should answer the question to know whether the
“position mark” is a category of signs eligible for trade mark protection. Obviously, the answer
is positive and with this postulate we are going to confirm it and to study if this category of
trademark requires different standards of examination and different scope of protection.
In order to explain this, the first point will tackle the role of the position of the sign in the
trademark right constitution (I) and the second point will be dedicated to the role of the position
and to the use made of the position mark in the effect of the right determination (II)
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I) the role of the sign’s position in the trade mark right constitution
The article 711-1 of the French intellectual property code (CPI) defines the trade mark as a
sign which can be represented graphically and which serves to distinguish products and services
of an undertaking from others11.
In this definition, the most important aspect of the trademark is its distinctiveness. It is the
criterion required for the sign’s registration as a trademark. The definition is very similar in the
CTMR because the text said that a trademark is a “sign which is capable of distinguishing the
goods or services of one undertaking from those of others undertakings”. The question treated
here is the analysis of the impact of position of the sign on the product on its registration.
First of all we will examine which are the sign likely to need to be positioned on the product
in order to acquire the distinctiveness (A) and then we will study the distinctiveness of this
specific kind of marl: the “postion mark”(B).
A) The existence of the positioned sign
The position mark is a mark which needs to be placed in the same position and in constant
proportion on the product in order to be distinctive. The notion of “position” is essential. This
concept was created in Germany, as it is said in the introduction, and it is a subclass of the
figurative mark category. Indeed, in theory the nominative marks are excluded from the
registration as “position mark”, and in the first point of this part we are going to determine why
this category of sign does not need to be placed in a specific position in order to acquire
distinctiveness (1). However, in the category of non traditional mark like figurative, 3-D,
colour...marks there is some exclusion provided by the law of sign which can’t be registered like
trademark and as a consequence like “position mark” (2).
1) The nominative mark’s exclusion
The first conclusion we have to do is about the nominative mark. Indeed, this category of mark
does not need to be positioned on the product in order to be distinctive. In general, the
nominative mark juste has to be arbitrary regarding the product in cause and this is the
11
« Un signe susceptible de représentation graphique servant à distinguer les produits ou services d’une personne
physique ou moral »
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definition of the “classical” nominative trade mark (a). But there are some marks belonging to
this category which is closer than the “position mark” because they are not absolutely arbitrary
regarding the product or service designated. They are the weak trademarks, nevertheless as we
are going to develop, this kind of mark does not need to be positioned either (b).
a) The
The nominative trademark definition.
The nominative trademark is the mark which can be written or said. Here, there is no
problem to represent it graphically because the applicant just needs to reproduce it without any
fanciful character. This trademark can be composed by a number, letter, one or several words,
family or geographic name. It can be a real or a fancy name, that is to say a word which has no
specific meaning. This word just should be distinctive and no describe the service or product
designated (ex: apple is distinctive for a computer but not for a fruit).
The distinctiveness exigency is the only one legal and “de jure” requirement to the
trademark registration. Hence, the trademark law allows the registration of a sign, even common
place, if it is arbitrary regarding to the product or service designated in the application.
A trademark, in order to be registered, has to carry an appropriate message. Actually, contrary
to the position mark the notion of message or “signal” is inherent to the word sign because a
nominative mark will very often be a sign arbitrary regarding goods and services designated.
In conclusion, a position mark, which is a sign needed to be positioned in order to acquire
distinctiveness, can’t be a nominative trademark.
b) The weak trademark’s problem
There are some nominative marks which are not arbitrary regarding the goods or services
designating. Indeed, without being descriptive a trademark can recall or suggest the product
designated. Hence, the question here is to know whether or not an evocative trademark needs to
be positioned on the product to acquire distinctiveness?
Although the legal texts don’t use the word « arbitrary », the cases law, regularly, remind
that a trademark is distinctive if the sign is arbitrary with regard to the products or services
designated. In a French case (CA Paris, 18th of June 1992) about the "Coca-Cola" trademark,
the Court of appeal considered that “the words” combination, in this order, which permits to
obtain a particular phonetic pronunciation, constitutes a purely arbitrary choice, giving to the
global denomination a distinctive character to designate a drink. However, a sign which is not
arbitrary and only evocative can be considered as distinctive by the Court.
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Mr Bouvel and Mr Bonnet define the evocative mark as “a mark which no contains any
arbitrary element”. Every element of the sign’s composition has a link (more or less obvious)
with the product or service designated. The Judges and the authors accept the trademark validity
only if the sign alluding to the speciality is “clever”. That is to say that the sign does not
describe the product or service but let the consumer imagine the product by earring the mark. It
is a kind of suggestion. The evocative trademarks are very numerous because marketing’s
specialists estimate that a sign alluding to the product or service designated is more talkative
and easier to remind for the consumer. It is a performing advertising.
In the Baby Dry case12, the European judge held a very restrictive conception of the
descriptiveness. In this case, an application was filing for register a trademark designating
babies’ nappies. The use of the words “baby” and “dry” was quite descriptive given that the
diaper was made to keep the baby dry. Nevertheless, the ECJ granted the registration assessing
that “whilst each of the two words in the combination may form part of expressions used in
everyday speech to designate the function of babies' nappies, their syntactically unusual
juxtaposition is not a familiar expression in the English language, either for designating babies'
nappies or for describing their essential characteristics” (paragraph 33).
Then, the judge ruled that word combinations like “BABY-DRY” cannot therefore be regarded
as exhibiting, as a whole, descriptive character; they are lexical inventions bestowing distinctive
power on the mark so formed and may not be refused registration under Article 7(1)(c) of
Regulation No 40/94. That’s why a trademark exclusively composed by descriptive element can
be considered as distinctive in a whole.
In another decision13, the court added that “a mark consisting of a neologism composed of
elements, each of which is descriptive of characteristics of the goods or services in respect of
which registration is sought, is itself descriptive of those characteristics within the meaning of
Article 3(1)(c) of the Directive, unless there is a perceptible difference between the neologism
and the mere sum of its parts: that assumes that, because of the unusual nature of the
combination in relation to the goods or services, the word creates an impression which is
sufficiently far removed from that produced by the mere combination of meanings lent by the
elements of which it is composed, with the result that the word is more than the sum of its parts”
(Paragraph 31) C-265/00). But this definition does not exclude the possibility to register very
evocative trademarks.
12
13
C-383/99, September 2000 and T-163/98 8th of july 1999
C-265/00; 12th February 2004, Campina Melkunie BV v. Benelux-Merkenbureau
13
If the evocative character of a trademark does not prohibit the registration, it limits the scope of
protection. We should propound that the competitors of this kind of trademark (like “baby dry”
for example) can’t be prohibited to use the terms “baby” or “dry” if they are essential for their
activity. The opposite would go against the free competition principle and the article 6.1°, b) of
the community trademark regulation of the 21st of December 1998.
Some questions stay unanswered like to know whether the competitors can use the terms in their
common sense to describe the product qualities or whether they can include them in distinctive
sign like trademark. But this question is going further than my subject that’s why I will not
develop it more.
What is interesting here is the fact that it’s not the physical position of the mark which permits
to an evocative trademark acquiring the distinctiveness required. A mark composed by words
even if these words are quite descriptive does not need to be placed in a specific way on the
product to be distinctive and recordable.
The sign chosen by the undertaking has to be capable of distinguishing products and services
designated from others. The important principle constitutes an absolute ground of refusal. It
means that the sign should not be necessary, usual or descriptive. It is the descriptive character
which interests us for now. Hence, a sign will be necessary if the shape is commanded by the
nature of the product, its composition or its substantial value (which is the specific
element included in the product composition).
If we go further in this way and in this comparison we should note that in the Ford Motors
Company case14, the General Court asserted that the use of the mark can compensate for the
lack of distinctiveness. Indeed, in this case the judges ruled that the use of a mark can permit to
it to acquire distinctiveness but this use should be existed in a substantial part of European
Union (which is an obscure criterion). Here again, there is another specific aspect of the
“position mark” because the distinctiveness of this kind of sign can only exist thanks to the us as
we are going to see further.
A “position mark” can’t be a nominative mark even if the mark is common place or evocative.
If the mark is evocative the distinctiveness could be present in the creation of the mark yet. But
the use of the mark before the registration could help it to be registered. Here the position is not
needed but we can see an interesting connection with the position mark. Indeed, as we are going
14
TPICE, 30 mars 2000, Ford Motor Company, aff. T-91/99
14
to study it in the following developments, if the use is enough to let the nominative mark
acquire distinctiveness, the positioning of the mark will be required for the non traditional mark.
2) The legal exclusion for figurative sign
Because of its nature, the three-dimensional trade mark is different from the figurative
mark; actually the first one is dedicated for consumer’s eyes although the second one is for his
eyes and also for his ears. But the European Court of Justice, in each relevant case, held that it is
only one law entity and the judges don’t have to make any discrimination.
The principle held by the ECJ is the equality between the figurative mark and a mark constituted
by the product’s shape or packaging. That’s why, the same requirement for both is demanded.
The principal function of a three-dimensional trade mark has to permit the consumer to identify
the sign as a badge of origin. The shape must be perceived as an individual one, bellowing to a
given undertaking.
Shapes of goods may constitute a sign which can be registered as a trade mark within the
meaning of Art. 4 CTM. However, to be registered the shape should comply the requirements of
graphical representation and capability to distinguish. It must not be one of the signs excluded
by the law from registration.
In the article 7, e) ii of the CTMR, the legislator assessed that “The following (sign) shall not be
registered:
(e) signs which consist exclusively of:
(i) the shape which results from the nature of the goods themselves;
(ii) the shape of goods which is necessary to obtain a technical result;
(iii) the shape which gives substantial value to the goods”
This article is drawing inspiration from the uniform Benelux law of mark which is effective
since the 1st of July 1979. This law provides, in its article 1, that “The following shall be
considered individual marks: designations, designs, prints, seals, letters, numbers, shapes of
goods or their get-up, and any other symbols which serve to distinguish the goods or services of
an enterprise.
However, shapes determined by the very nature of the goods or which affect their actual value
or produce industrial results cannot be considered marks”.
It can be justified because the legislator refuses that a sign be monopolized for an unlimited
time. For example, if a shape is necessary or is useful for the manufacture or the marketing of a
15
product, it will be unfair to let it exclusively between the hands of one undertaking. It is the
translation
of
the
very
important
European
aim
of
free
competition.
The European judges assessed a 3-D trademark should be appreciated under the same criteria
than the traditional trademarks. But the referent public has a different perception of the sign
because he is not used to recognize the product origin just seeing its shape15.
The trademark law should not be distracted from its purpose of distinctiveness. Indeed, the
registrant can not use the trademark law in order to obtain a long protection on a shape imposed
by the good nature, a technical shape or a shape which gives its substantial value to the good.
This article permits to avoid the law fraud. We will study the “substantial value” case in the
second part of this point. For now let us focus on the other two absolute grounds of refusal.
The most important, and the most developed, is the exclusion of shape necessary to obtain a
technical result from registration. Indeed, functional signs can’t comply trademark function
because their first function is not to make the distinction between different services or products.
This exclusion is also in the article L. 771§2 of the French CPI which provides that” the signs
composed exclusively by the shape lay down…by the product function” can’t be registered as a
trademark.
The exclusion is here based on the fact that the creation does not belong to the category of
aesthetical creation and belong another category, those of technical creation and the only
possibility to protect the sign of this category is the patent law.
The French judges have the same interpretation than the European Court of this rule.
In the very important Philips v. Remington case in 199916, the judges assert that this ground of
refusal is a preliminary hurdle to the registration or the trademark validity without needing to go
further and know whether the sign was distinctive or was not. In the previous literature, it had
frequently been held that "a shape is only necessary to obtain a certain technical result when
there are no equivalent alternatives to it for obtaining the same technical result".
In the Phillips case, the referring court seeks to know whether the restriction imposed by the
words “if it consists exclusively of the shape of goods which is necessary to achieve a technical
result” appearing in Article 3(1)(e)(ii) is able to be overcome by establishing that there are other
shapes which can obtain the same technical result.
The ECJ answers here that “As regards, in particular, signs consisting exclusively of the shape
of the product necessary to obtain a technical result, listed in Article 3(1)(e), second indent, of
15
V. TPICE, 16 févr. 2000, Procter & Gamble Company
16
ECJ, 18th June 2002 Philips v. Remington, C-299/99
16
the Directive, that provision is intended to preclude the registration of shapes whose essential
characteristics perform a technical function, with the result that the exclusivity inherent in the
trade mark right would limit the possibility of competitors supplying a product incorporating
such a function or at least limit their freedom of choice in regard to the technical solution they
wish to adopt in order to incorporate such a function in their product.
As Article 3(1)(e) of the Directive pursues an aim which is in the public interest, namely
that a shape whose essential characteristics perform a technical function and were chosen to
fulfil that function may be freely used by all, that provision prevents such signs and indications
from being reserved to one undertaking alone because they have been registered as trade marks
(see, to that effect, Windsurfing Chiemsee, paragraph 25).” (Paragraph 79-80)
With this case, the Court confirmed that a sign which is exclusively composed by shape
necessary to the technical result getting should be rejected from registration. The existence of
another possible shape to obtain the same result is not relevant here. (paragraph 81 “As to the
question whether the establishment that there are other shapes which could achieve the same
technical result can overcome the ground for refusal or invalidity contained in Article 3(1)(e),
second indent, there is nothing in the wording of that provision to allow such a conclusion.”).
The same solution was held by the ECJ in the Linde case law in 200317.
This solution was necessary because the functional shapes are protected yet by patent law. The
term of a patent right is set to allow a short monopoly on an invention. It is in order to let the
possibility for competitors to develop the technique too. Nevertheless, if a trademark
registration was granted for this kind of shape, an invention could be protected indefinitely
which is contrary to the patent right’s concept.
The same conclusion was drawn by the Grand Board of Appeal at OHIM regarding the
LEGO building block. Where shapes are excluded for technical reasons, this applies even where
people are inclined to think that the respective shape "looks good", for such a shape "is not there
to indicate a connection with a trade mark owner but to do a job of work".
This case aims at the trademark which is exclusively constituted by the product’s shape
necessary to obtain the technical result. But in his conclusion Ruiz Jarabo Colomer laid
emphasis on the fact that the ECJ’s arguments in the Philips case can be extended to the others
article 7, e) ii exclusions. And it was done with the Jeep case law for the « substantial value »
exclusion as we will see further.
17
ECJ, 8th of April 2003, C-53/01
17
It is more difficult for a trademark examiner to determine whether a particular shape results
from the nature of the goods or not.
This provision raises a very important litigation in the European court. It is very hard to
envisage such shapes, except those which reproduced nature elements such as
fruits...Consequently; a sign consisting of the shape of a coconut to designate coconuts would be
a shape which results from the nature of the goods themselves. However, the shape of a bar of
soap cannot be held to result from the nature of the soap itself because a soap has no shape
resulting from the nature. A lot of authors think that the word “nature” has to be taken literally.
As a consequence if the sign is the orange shape and the good is an orange juice there is no
hurdle to the registration. Indeed, "a liquid can have any shape, the shape of a container for
liquids does not arise from the nature of the goods themselves"18.
The exclusion is based on the fact that the product has a very common shape, usual and that
it is widely used by undertakings which put it on the market place. It is the equivalent of a
descriptive nominative mark. In general, the judges refuse to admit the distinctiveness of the
sign because of its nature; their argument is the descriptive character of the sign.
In a French decision19, the Court of appeal settled about the registration application of a
packaging of cooked meats sliced yet displayed on a wooden plate. The Judges estimated that
the shape of this packaging was not imposed by the nature or by the function of the cooked
meats products. Indeed, the presentation of these goods was not neither usual nor necessary.
Here, the French judges assimilated the ground of refusal provided by article 7 e) ii) CTMR to
the refusal of register descriptive signs.
The Court of Instance ruled about an application for a figurative trade mark in the first Procter
and Gamble case20. The goods in respect of which registration of the mark was sought were
“soaps” in class 3 of the Nice Agreement. In 1997, the examiner informed the applicant that the
sign applied for, which consisted exclusively of the shape which results from the nature of the
goods themselves, was not eligible for registration under Article 7(1)(e)(i) of Council
Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark. But, the
applicant argued that the claimed three-dimensional shape was distinctive because its waisted
bone shape formed by indentations on the longest side was not common in the trade. The Board
of appeal refused to register the trade mark.
In its decision, the CFI estimated that it was only necessary to rule on the ground for refusal
18
ECJ, January, 12th 2006, Deutsche Sisi-Werke Gmbh C, C-173/04
19
CA Amiens, 1ère ch., 1ère section, 27 octobre 2005, SA Jouvin Frères / Lacroix Emballages
20
Affaire T-129/00 Procter & Gamble/OHMI
18
based on sign's consisting exclusively of the shape which results from the nature of the goods
themselves, provided for in Article 7(1)(e)(i). The Court reminds that, this article providing
that signs which consist exclusively of the shape which results from the nature of the goods
themselves are not to be registered. The judges add that “as the Office has rightly pointed out
before the Court, the shape claimed bends inwards along its length and has grooves which do
not come about as a result of the nature of the product itself. It is common ground that there are
other shapes of soap bar in the trade without those features” (paragraph 55).
That’s why, the CFI upheld the plea. Here the argument to consider that a shape is not imposed
by the nature of the product seems to be the fact that if it exists in the trade others possible
shapes for the product, the characteristics of the sign can’t be the result of the product nature.
The appreciation of this ground for refusal is quite different from the one we’ve seen previously.
Indeed, in the paragraph 83 of the Philips Electronics v. Remington case, the judges ruled that
when “the essential functional characteristics of the shape of a product are attributable solely to
the technical result, Article 3(1)(e), second indent, precludes registration of a sign consisting of
that shape, even if that technical result can be achieved by other shapes”. The criterion of
shape’s multiplicity is denied here.
To sustain the argument that the exclusion of shape resulting from the nature of the product
is the equivalent of the exclusion of descriptive mark we can see these following cases.
Indeed, in the Henkel case21 which was about 3D tabs to wash the Court said that “the threedimensional shape for which registration has been sought … is one of the basic geometrical
shapes and is an obvious one for a product intended for use in washing machines or
dishwashers”.
The same day, the Court held another Procter and Gamble decision22, précising that “in
those circumstances, the more closely the shape for which registration is sought resembles the
shape most likely to be taken by the product in question, the greater the likelihood of the shape
being devoid of any distinctive character for the purposes of Article 7(1)(b) of Regulation No
40/94. Only a trade mark which departs significantly from the norm or customs of the sector and
thereby fulfils its essential function of indicating origin, is not devoid of any distinctive
character for the purposes of that provision (see, in relation to the identical provision in Article
3(1)(b) of First Directive 89/104, Henkel, paragraph 49)”.
21
ECJ, April, 29th 2004, C-456/01, Henkel v. OHMI paragraph 50
22
ECJ, April 29th 2004, C-468/01, Procter & Gamble v. OHMI, paragraph 37
19
Here the question of position mark should not be raised because even if the sign is distinctive,
the exclusion is an absolute bar of registration. Now we have excluded the sign’s categories
which should not be considered as a trademark, we can study the kind of sign which need to be
positioned on the product in order to acquire distinctiveness.
The nominative trademark and some figurative mark can’t be part of the “position mark”
category because they don’t need to be positioned or because they can’t be considered like
trademark. Among the others trademark belonging to the figurative, 3-D or others nontraditional trademark, there are some for which the position of the sign has a decisive part in the
distinctiveness acquisition.
B) The distinctiveness of a positioned sign
The trademark is by definition a distinctive sign. As such, it permits to distinguish the
industrial or commercial origin of the products which are designated by these sign23. The
existence of the distinctive character is a validity condition and the only de jure condition for
the registration of the mark. Indeed, there is no requirement of novelty or originality provided
by the Council Regulation. If we limit the development to figurative and three-dimensional
trademark (composed by creation), we should note that the distinctive function can exist only
when the creation is new and no one uses this creation in its distinctive function. This function
can be new in two situations either when the creation is new (1) or it’s known and used as an
aesthetical creation and it will acquire distinctiveness if only one operator positions the sign on
the market place as a trade mark (2).
1)
The position of the figurative sign indifferent in the distinctiveness of
the mark
The position of the mark on the product is irrelevant in principle. In order to be registered as
a trademark the sign should be distinctive. It is the principle function of the mark. However,
a sign, especially if it is a figurative and aesthetic sign, can hold different functions (a). But
the distinctive one will be predominant only if the sign is new and the aesthetic function too
(b).
23
Droit de la propriété industrielle, Joanna Schmidt-Szalewski, Jean-Luc Pierre
20
a) The distinction between the distinctive function and aesthetic function of the
figurative sign
The CTMR provides no requirement of novelty or originality for the registration of trademark.
They are those which are demanded for copyright protection or designs registration. But some
of figurative of three-dimensional trademarks are aesthetical creations (like Lacoste, puma...)
Indeed, a sign can carry several messages and moreover when the shape is considered as
a whole, it may still convey more than one message24. There is the trademark message which
consists in indicate the origin of the product and enable purchasers or users to make an informed
choice. And there are others messages which are more subjective, they are persuasions to buy
on basis of enviable lifestyle or witty allusion. All of these messages perform different
functions: commercial, identification, aesthetical. That is what the ECJ recognized in the
L’Oreal Bellure case. The feature of the product serves the goal of visual delight and motivates
the customer to buy irrespective of the origin of the product... this occurs when the shape is
offered in the market place as a product with attractive qualities but not positioned by the
undertaking as a mark.
The fact that a product design serves purposes other than identification renders inherent
distinctiveness problematic. The message conveys by the sign depends on the perception of
customers. But where a number of different signs co-exist on the same product, they may or
may not all be recognized as trade mark. This problem does not exist for nominative trademark
.The consumer perception of product design is different from others kind of signs or marks. For
some it will need to see it a long time before.
But the fact that a trade mark has ornamental qualities is not in itself a reason for deciding that it
lacks distinctive character. If the sign, although not exceptionally surprising or particularly
original, is capable of creating in the mind of consumers the necessary link between the
products and a particular firm, there is no bar to register it, especially when there is no need to
keep it free for competitors to use.
Thus, a trademark can perform different function. The creation has first of all an aesthetical
function and then it will be able to perform the distinctive function. Both of these functions are
different and will not fulfil the same objectives.
24
EIPR, “shapes as trade marks: public policy, functional consideration and consumer perception” Alyson Firth
21
A shape, a packaging or a drawn can be used as product ornamentation. Raymond
Loewy was right when he said in the 1930s: “Ugliness does not sell”. Between two products,
equal in price, function and quality, the better looking will indeed outsell the other. There is no
product, put in the market place, which are not subject of studies and researches about its
appearance. Indeed the product appearance is very important. It’s a marketing question. If the
shape is common the consumer will not be attracted by it at first sight.
25
The aesthetic function is absolute and permanent. It is not the same for the distinctive one.
Indeed, when the aesthetical creation is used as a trademark, the sign, which have to be
distinctive, needs a function of distinctiveness independent from the aesthetical one. We can
note that the decorative innovation will be protected by the design law, however if the shape
perform the entire requirement to be protected as a trade mark, it will be protected as an
indicator of origin. “From this point of view, the commercial value of the shape is no longer
connected with the merits of its outward appearance, but with its aptitude to be perceived as a
business identifier26”.
The aesthetic function is very important but it should not be the first function of the sign.
Hence, shapes will remain unregistrable if they exclusively give substantial value to the goods.
The article 7(1) EC 207/2009 provides that “a sign shall not be registered if it consists
exclusively of the shape which gives substantial value to the goods”.
A product shape "gives substantial value to the goods if the shape in itself has intrinsic value,
for example, if the product has a particularly elaborate design27", perhaps it is for these goods
for which design protection might preferably be sought. A shape will give substantial value if
factors other than shape alone may determine consumer’s choice. The attention might inevitably
be focused on certain categories of goods that are essentially decorative or marketed primarily
for their aesthetic appeal…
Thus, in view of the ECJ's decision in Benetton v. G-Star, "the shape of a product which gives
substantial value to that product cannot constitute a trade mark where, prior to the application
for registration, it acquired attractiveness as a result of its recognition as a distinctive sign
following advertising campaigns presenting the specific characteristics of the product in
question28".
25
The father of industrial design (1893-1986)
26
Arnaud Folliad-Monguiral
27
IIC, 2009, Article, “The requirement for registration and protection of non-traditional marks in the European
union and in Tanzania” Jacob Jaconiah
28
ECJ, 20 September 2007, C-371/06
22
Indeed, this provision is an absolute bar to registration, irrespective of whether the sign
is perceived as distinctive by the applicant, because of an overriding public interest. The result
of a refusal under this article is draconian because a sign rejected from registration under the
article 7(1) (e) iii will no be accepted even if it has acquired distinctiveness after use (secondary
meaning). It can be explained with the importance of the competition law. Actually an
undertaking must not monopolize a shape to the detriment of its competitors and of consumers.
Because of the need to reinforce the public interest aspect of the exclusion, there are some
restrictions on the protection of shape as trademark.
Furthermore, shapes stand at the intersection of trade mark and others intellectual propriety
rights. So, the primary public interest underpinning the shape exclusions is the promotion of fair
and effective competition in the production of consumer goods and services and the avoidance
of undesirable monopolies (it is part of the most important aim of the European Union like
competitive single market, free national barriers…).
The distinctive function is the only one which permits to a sign to be registered as trademark.
In the Procter and Gamble case29 the Court considers that “trade marks which are
devoid of any distinctive character are not to be registered”. It also judges that the distinctive
character must serve to identify the product in respect of which registration is applied for as
originating from a particular undertaking, and thus to distinguish that product from those of
other undertakings”. Thus, a relevant sign must be capable of distinguishing goods originating
from one undertaking from those tracing their origin from other sources. It is the substantial
requirement of trademark validity.
Then the distinctive character has to be assessed “first, by reference to the products or services
in respect of which registration has been applied for and, second, by reference to the perception
of the relevant public, which consists of average consumers of the products or services in
question, who are reasonably well informed and reasonably observant and circumspect”.
In the Jeep case law (T-128/01), the Court of first instance considers that a sign, which
can be registered as trade mark, is deemed to be capable of exercising the essential function of a
trade mark, which is to identify the commercial origin of the goods or services, thus enabling
the consumer who acquired them to repeat the experience, if it proves to be positive, or to avoid
it, if it proves to be negative, on the occasion of a subsequent purchase.
The distinctiveness is not the novelty. Indeed, the trademark is not a creation. An existing sign
can constitute a valuable mark. The notion of novelty which qualifies something which didn’t
exist yet is a stranger notion as trademark. Nevertheless, to acquire immediately the
29
ECJ, 29 April 2004, C-473/01P et C-474/01P, Procter & Gamble Company
23
distinctiveness without need the use, the shape has to be new. The “never seen before”30
criterion may permit the sign to become distinctive, if the shape to a packaging or product is
sufficiently innovative to strike the consumers' attention.
b) The admission of the figurative sign distinctiveness
For a classical trademark the capability of distinguishing goods and services designating by the
sign and the sign’s capability of being represented graphically are sufficient to register the sign.
However, for figurative sign the requirement of distinctiveness divides in two aspects. This is,
on the one hand, the fact that the figurative sign constitutes a new aesthetic creation (i) and on
the other hand that the function of distinctiveness is new (ii).
Let us analyse them.
i) The existence of a new aesthetic creation
A shape is in the limited line between design, creation and trade mark. The question of the
sign’s position could be raised only for this kind of sign, those which are composed by
creations. Indeed, worlds cannot need to be positioned to acquire distinctiveness as we saw
previously. So an aesthetic creation can be a shape, a drawn or colours.
An aesthetic creation can be registered as a trade mark even if it’s protected by the copyright. In
fact, the accumulation between these rights it’s possible.
But the copy rights pre-exists to the trademark right because it is not necessary to file a
registration to obtain it. It is inherent to the creation. That is why to apply from a trade mark
with a creative sign the agreement of the author is required. If this creation is registered without
the author’s consent, it consists of an infringement. However the creation has to fill the
conditions to be qualified as protectable work.
There is no specific European legal system for protecting trademarks. Only some aspects of the
copyright know an harmonization like the term for example. To determine, if the work of art is
protected and if it can be use as a trademark, the applicant should check the national legal
system of copyright. In French, the only criteria required, is the originality of the work.
The Cassegrain case law (T-73/06) was about an application for a Community trade mark
which was a figurative shape of a bag. This application was rejected because the judge
considered that it was devoid of any distinctive character. The Board of Appeal estimated that
30
Arnaud Folliard-Monguiral, “The protection of shapes by the Community trade mark”, EIPR, 2003
24
the copyright law had to be independent from the trade mark law. The Tribunal upheld the
decision considering that the shape of the bag was very common place and lacked of
distinctiveness and then added the fact “that in the national law, the sign is protected under
copyright law is not sufficient to acquire the distinctive character”31. However, it is not excluded
that the shape protection by national copyright is taken into account in the distinctive character
examination. Just this circumstance will not be sufficient to establish the distinctiveness. Indeed,
as it was said previously, the originality is not a requirement for trademark protection, but it can
help during the examination of the distinctiveness.
The figurative sign can also be protected by the community design law. Here, the two
requirements, provided by the Council Regulation 6/2002 on Community design, to be protected
and to obtain the right are the novelty (“A design shall be considered to be new if no identical
design has been made available to the public” Art 5-1) and the individual character (“if the
overall impression it produces on the informed user differs from the overall impression
produced on such a user by any design which has been made available to the public” article 6-1)
To sum up, the criterion of the protection of the aesthetic creation is the novelty or
originality (the copyright law has to protect every spirit’s work granting authors moral and
patrimonial rights. Moreover the Judge added that “the copyright defines the works of the spirit
according to their originality”32).
In principle, the distinctiveness is not the originality, the creative merit of a shape is
ineffective to overcome the lack of distinctive character and a common sign can acquire
distinctiveness. Even if the sign is really original, judges always require “a minimum degree of
distinctiveness”.
However, if we look at the recent case law about the thee-dimensional trademark, it is relevant
to note that the Court or the Tribunal wants the shape to be original in order to be register as
trade mark.
For example, in the Jeep case law 33 the Tribunal asserts that the fact that a sign serves several
purposes at once has no bearing on its distinctiveness, particularly if the distinguishing function
outweighs the other functions. But the sign in question which was the front grille of a vehicle
was rejected from registration because the OHIM had “estimated that the sign in question was
within the limits of what the average consumer is accustomed to seeing as a grille on a land
vehicle and that it did not therefore have an arbitrary or fanciful character.” That conclusion was
31
T-73/06, CFI, 21 October 2008, Cassegrain case law
32
Id paragraph 32
33
CFI, 6th March 2003, DaimlerChrysler Corporation, T-128/01
25
also reinforced by the Board of Appeal's finding which had estimated that ‘the grille device is
not exactly commonplace’.
The Court confirmed and added that the sign in question must be considered to have the
minimum degree of distinctiveness necessary to escape the absolute ground for refusal in the
article 7 (1) (b) of Council Regulation (EC) No 207/2009) of 26 February 2009 on the
Community trade mark
Thus, in the Bang and Olufsen case 34 the OHIM had refused to register the 3-D shape
of a loudspeaker because it was devoid of any inherent distinctive character. The First Board of
Appeal of OHIM had dismissed the appeal on the ground that the sign in question was barred
from registration pursuant to Article 7(1)(b) of Regulation No 40/94. The shape was not
considered to be altogether common. Thus the body of the loudspeaker was formed of a cone
which looks like a pencil or an organ pipe the pointed end of which joins to a square base. In
addition, a long rectangular panel is fixed to one side of that cone and heightens the impression
that the weight of the whole rests only on the point which barely touches the square base. In that
way, the whole creates a striking design which is remembered easily.
It had characteristics which were sufficiently specific and arbitrary to retain the attention
of average consumers and enable them to be made aware of the shape of the applicant’s goods.
Thus this was not one of the customary shapes of the goods in the sector concerned or even a
mere variant of those shapes. Here the Court required that the mark “applied for departs
significantly from the customs of the sector” and asserted that “a shape having a particular
appearance which, having regard also to the aesthetic result of the whole, is such as to retain the
attention of the public concerned and enable it to distinguish the goods covered by the trade
mark application from those of another commercial origin”. Finally, “even if the existence of
specific or original characteristics does not constitute an essential condition for registration, the
fact remains that their presence may, on the other hand, confer the required degree of
distinctiveness on a trade mark which would not otherwise have it”.
Finally, the sign was not accepted for the registration because the first Board of Appeal
of the OHIM35 kept its position and refused the registration because the sign gave its substantial
value to the product. In conclusion, too much ornamental qualities are a hurdle to the
registration. The applicants have to find a good compromise.
Then, if the mark is essentially dictated by aesthetic considerations, it suffices to state that, in so
far as the relevant public perceives the sign as an indication of the commercial origin of the
34
35
CFI, 10th October 2007, Bang and Olufsen, T-460/05
First Board of appeal, September 10th, 2008, Bang and Olufsen v. OHIM
26
goods or services, whether or not it serves simultaneously a purpose other than that of
indicating commercial origin is immaterial to its distinctive character36.
Nevertheless, if the shape is common place, at first sight it could not be an aesthetic creation, it
will be difficult to register it as a trademark. So the shape is not distinctive and its owner will
not be able to position it as a trade mark because the product shape will stay common, it is not
distinctive because it is used by every one. The common shape is linked to the product. But the
directive does not exclude common shape however in the trade practice it is.
The Court of first instance reminds in this Smiley case (T-139/08) that to be registered as
trademark a sign is not subject to a finding of a specific level of linguistic or artistic creativity or
imaginativeness on the part of the proprietor of the trade mark. It suffices that the trade mark
should perform the distinctive function. In this case the sign which the registration was applied
for, was a very simple and banal design and the Court considered that it had “an exclusively
decorative function and not that of identifying the commercial origin of the goods”. But in this
case law, the Court doesn’t exclude immediately the possibility of performing the trade mark
function and it adds that “It is thus necessary for that sign, even if it is decorative, to have a
minimum degree of distinctive character”.
The exigency of a new aesthetic creation is not as such a new requirement for the registration of
the trade mark but it is a very relevant evidence to prove that the sign is distinctive.
ii) The existence of a new distinctiveness function (cf. by the products and the
availability)
Article 7(1) (b) of the CTMR provides that the following shall not be registered: “Trade marks
which are devoid of any distinctive character.” It is sufficient to establish that the mark presents
a “minimum degree of distinctive character” for this absolute ground for refusal not to be
applicable37. Thus, the function of distinctiveness is the principal function of a trademark. It’s
moreover the only one required to allow the registration of a sign as a trademark. To admit the
distinctiveness of an aesthetic creation immediately without needing the secondary meaning, it
is necessary that this function of identification was never used before.
Under Art.7(1)(b) of the CTMR, only the inherent distinctiveness of the mark is taken into
consideration. It is not necessary that the trade mark conveys precise information about the
manufacturer of the goods. It is enough that the 3-D mark be perceived as an indication of an
36
Case T-173/00 KWS Saat v OHIM (Shade of orange), paragraph 30; Calandre, paragraph 43; and Case T-129/04
Develey v OHIM (Shape of a plasticbottle), paragraph 56
37
CFI T-88/00, 7th February 2002, §34
27
origin which may be distinguished from that of competitors' goods. Hence, the inherent
characteristics of the sign should indicate to a purchaser the origin of the product and not just its
representation. “Only a mark which departs significantly from the norm or customs of the sector
and thereby fulfils its essential function of indicating origin is not devoid of any distinctive
character for the purposes of that provision38”.
In addition, the features of a 3-D mark must not be limited to the mere “standard”,
commonplace or obvious characteristics presented by a large number of existing products.
Shapes consisting of a variation of already known unimaginative or conventional designs are
deemed devoid of distinctiveness. Similarly, unsophisticated geometrical shapes with or without
ordinary colour combinations, are usually deemed to be lacking those memorisable features that
may convey the reference to a single origin. These 3-D marks are therefore rejected (“Nor is the
fact that a triangular shape has been selected for the inlay sufficient to confer distinctiveness on
the mark applied for. Associating two basic geometric shapes in such a way as can be seen in
the tablet at issue is one of the most obvious variations on the get-up of the product concerned.
In the absence of any additional features, capable of having an impact on consumers' perception,
that combination of shapes does not enable the public concerned to distinguish the products
presented in that way from those having a different trade origin”39)
Moreover, as we saw, the mere fact that the 3-D mark presents some fanciful elements is not
decisive unless these arbitrary features are considered “dominant” by consumers, that is, they
must be perceived as characteristic elements of the mark, rather than as secondary details.
The distinctiveness has to be appreciated in regard to the product which the registration is
applied for and in regard to the availability of the sign. (P&G case, paragraph 33: “that
distinctive character must be assessed, first, by reference to the products or services in respect of
which registration has been applied for and, second, by reference to the perception of the
relevant public, which consists of average consumers of the products or services in question,
who are reasonably well informed and reasonably observant and circumspect”40).
A trade mark does not have to be original or new; it simply has to perform an arbitrary character
which is estimated towards designated products or services. (CJCE, 16/09/2004, SAT.1 c/
OHIM, aff. C-329/02, pt 41: “Registration of a sign as a trade mark is not subject to a finding of
a specific level of linguistic or artistic creativity or imaginativeness on the part of the proprietor
of the trade mark”)
38
CFI, Mag lite, paragraph 31
39
CFI, 19th September 2001, Procter and Gamble v. OHMI, T-129/00, paragraph 60
40
see, inter alia, Linde, paragraph 41, and Case C-363/99 KoninklijkeKPN Nederland
28
The distinctive character has to be considered in concreto in regards to the object designated, it
is relative. The same sign could be distinctive towards one item and not towards another one.
For example the world “apple” is distinctive for Computer Company and it will not for Fruit
Company.
Thus, the sign has to be arbitrary with regard to the indicated product, its choice should not be
imposed by the characteristics of the product, and its qualities, and its common name …It is
then intrinsically distinctive41. The requirement of distinctive character is motivated by the
overriding public interest, but the appreciation of this last one must be adapted to each of the
mentioned in article cases 3, 1st paragraph, of the directive or in the article 7, the 1st paragraph,
of the regulation. (CJCE, 16 sept. 2004, SAT.1, paragraph 25: “The general interest to be taken
into consideration when examining each of those grounds for refusal may or even must reflect
different considerations according to the ground for refusal in question »)
Hence, the requirement of distinctive character is based on the necessity of not restricting the
availability of the signs for the rival economic operators (“Accordingly, the reply to the third
question referred must be that, in assessing the potential distinctiveness of a given colour as a
trade mark, regard must be had to the general interest in not unduly restricting the availability of
colours for the other traders who offer for sale goods or services of the same type as those in
respect of which registration is sought42”). Moreover, the sanction of the sign’s descriptive
character justifies itself by the fact that the concerned signs must be able to be used by all43.
It is however more complicated for a figurative sign to acquire distinctiveness.
The distinctiveness should be assessed, first, by reference to the perception of the relevant
public, which consists of average consumers of the products or services in question, who are
reasonably well informed and reasonably observant and circumspect. This criterion is not
different from those applicable to other categories of trade mark. Nevertheless, the relevant
public’s perception is not necessarily the same in relation to a three-dimensional mark
consisting of the shape and colours of the product itself as it is in relation to a word or figurative
mark consisting of a sign which is independent from the appearance of the products. Indeed, in
the Procter and Gamble case, the judge asserts that “the average consumers are not in the habit
of making assumptions about the origin of products on the basis of their shape or the shape of
their packaging in the absence of any graphic or word element and it could therefore prove more
41
Marque, August 2009, Robert KOVAR
42
ECJ, 6th May 2003, Libertel, aff. C-104/01, paragraph 60 and ECJ, 24th June 2004, Heidelberger Bauchemie,
paragraph 41
43
A. FOLLIARD-MONGUIRAL, Propr. ind. 2008, comm. 55
29
difficult to establish distinctiveness in relation to such a three-dimensional mark than in relation
to a word or figurative mark”.
The principle held by the ECJ is the equality between the figurative mark and a mark
constituted by the shape or the packaging of a product44. That’s why, the judges have to require
the same elements for both. The first question is to know whether this kind of mark can answer
the same distinctiveness requirement which is applied for the other trade mark categories. In the
Henkel case law, the TPI asserted that « is not appropriate to apply more stringent criteria when
assessing the distinctiveness of three-dimensional marks comprising the shape of the goods
themselves or the shape of the packaging of those goods than in the case of other categories of
mark»45. The ECJ in the Phillips v. Remington case law added that « the Directive makes no
distinction between different categories of trade marks. The criteria for assessing the distinctive
character of three-dimensional trade marks, such as that at issue in the main proceedings, are
thus no different from those to be applied to other categories of trade mark»46.
If the three-dimensional nature of a sign doesn’t have any influence upon the
distinctiveness requirement, it can influence the public perception of the trade mark because it
can become confused with the shape or packaging of the product. The European judge notes that
the public perception should be different in front of three-dimensional trade mark or a
nominative or figurative trade mark which is independent from the product designed. To be able
to recognize a shape as a trade mark, it has to present some precise characteristics suitable to
indicate its origin. That’s why the distinctiveness required by the law is higher for this kind of
sign (example of the bottle’s shape which is only a mere variation of the classical shape).
For some kind of signs, when they are in profusion in the market place, it’s quite difficult to
make a distinction from each other because the owner of the sign have to prove that his shape is
distinctive from the others of a product which have the same nature (cf. Mag lite). Finally, the
distinctive level required by the judges is higher for this kind of trademark.
The new distinctive function has to appear in the same moment as the creation. In the Smiley
case, the Court requires for common and usual shape (but it is the same requirement for shape
which are more decorative, aesthetical) that “the sign may be perceived immediately as an
indication of the commercial origin of the goods or services in question, so as to enable the
44
Albert GALLEGO
45
CFI, 24th November 2004, T-393/02
46
ECJ,18th June 2002, C-299/99, paragraph 48
30
relevant public to distinguish, without any possibility of confusion, the goods or services of the
owner of the mark from those of a different commercial origin”.
In this case, the sign will not need to be positioned by its owner if the distinctive function
appears in the same moment as the creation. Indeed, it is the principle. The regulation doesn’t
require that the sign should be positioned to be registered. It is the same for the figurative marks
which don’t need to be positioned as trade mark because they are inherently distinctive47.
Then, in the moment of the registration the sign should be only used by one operator. This
requirement was put forward by the ECJ in the Philips v. Remington litigation (“In the light of
those considerations, the answer to the third question must be that, where a trader has been the
only supplier of particular goods to the market, extensive use of a sign which consists of the
shape of those goods may be sufficient to give the sign a distinctive character for the purposes
of Article 3(3) of the Directive in circumstances where, as a result of that use, a substantial
proportion of the relevant class of persons associates that shape with that trader and no other
undertaking or believes that goods of that shape come from that trader”.) It is a requirement
often reminded by the judge.
2)
The position of the figurative sign: condition for the distinctiveness
distinctiveness of
the mark.
If the aesthetical creation is not capable to distinguish immediately the products designated,
the Community regulation offers one more possibility to register the design. It is the secondary
meaning. Indeed, the article 7 (1) (b) of the Council Regulation rejects from registration signs
which are devoid of any distinctive character, however, the article 7 (3) provides that
“Paragraph 1(b), (c) and (d) shall not apply if the trade mark has become distinctive in relation
to the goods or services for which registration is requested in consequence of the use which has
been made of it.” The position of the signs as a trademark permits first of all to make the
distinction between the original function of the mark and its function of figurative mark, then it
allows to admit the distinctiveness of the sign (b)
47 A comparison with the nominative mark can be done here. Let us suppose the word “window”. It will acquire a
new function of identification when it will be used for the first time to designate a window. Let us imagine now an
operator is drawing a model of window, it’s an aesthetic creation. The creation is used for windows and the
operator is the only one to do this. Here it’s the use as a trademark which creates the distinctiveness. This example
proves that the approach is not different for figurative mark than for nominative trademark.
31
a) The distinction, by the use, between the origin function of the mark and the function
of figurative sign
Signs lacking distinctiveness per se, that is to say which are not intrinsically distinctive can be
registered if they acquire distinctiveness as a consequence of their use. This use conferred on
them the minimum degree of distinctiveness which they initially lacked.
This provision exists since the Paris Convention signature in 1883. Hence, the article 6
quinquies c.1 of Paris Convention specifies that “in determining whether a mark is eligible for
protection, all the factual circumstances must be taken into consideration, particularly the length
of time the mark has been in use”.
Moreover, it is provided by the article 7(3) of the CTMR. This is a fact question. A sign which
was not distinctive can be perceived by the referent public as an indication of origin because of
the use made of it by the owner of the sign. Cases law are giving us some indications and
evidences in order to assess whether or not the distinctiveness has been acquired thanks to the
use. That’s why, judges are looking if the “the market share held by the mark; how intensive,
geographically widespread and long-standing the use of the mark has been; the amount invested
by the undertaking in promoting the mark; the proportion of the relevant class of persons who,
because of the mark, identify goods as originating from a particular undertaking; and statements
from chambers of commerce and industry or other trade and professional associations”
(Windsurfing Chiemsee, C-108/97 et C-109/97, paragraph 51)
In the Mag Lite case law, the ECJ implements this provision to the sign which the registration
is sought for. The judges take up the idea of the Libertel case that “the distinctive character may
be acquired, inter alia, after the normal process of familiarising the relevant public has taken
place”48.
In the Libertel case, the ECJ had added that “in such cases, the competent authority must make
an overall assessment of the evidence that the mark has come to identify the product concerned
as originating from a particular undertaking, and thus to distinguish that product from goods of
other undertakings”.
However, in the Windsurfing Chiemsee case law49, the ECJ yet had assessed that “if on the
basis of those factors, the competent authority finds that the relevant class of persons, or at least
a significant proportion thereof, identify goods as originating from a particular undertaking
because of the trade mark, it must hold that the requirement for registering the mark is satisfied.
48
see Case C-104/01 Libertel, paragraph 67
49
C-108/97 et C-109/97, paragraph 53
32
However, the circumstances in which that requirement may be regarded as satisfied cannot be
shown to exist solely by reference to general, abstract data such as predetermined percentages”.
So, the authority can have recourse, under the conditions laid down by its own national law, to
an opinion poll as guidance for its judgment50.
Thus, to verify if the requirement for secondary meaning is satisfied, the authority must
have check all the relevant facts and circumstances which must be carried out in relation to the
presumed expectations of an average consumer of the goods or services in respect of which
registration is sought.
Then, in the Mag Lite case, the Court asserted that the secondary meaning is not an obligation
and it will not be require if the evidences of distinctiveness “show that consumers did not need
to become accustomed to the mark through the use made of it, but that it immediately enabled
them to distinguish the goods or services bearing the mark from the goods or services of
competing undertakings”. In this litigation, the evidences were related that the shape in question
“had already been on the market for many years and when consumers were thus accustomed to
their shape”. So the Court concluded that this evidence failed to show the inherent distinctive
character of the shape and was just capable of establishing that those marks could become
distinctive in consequence of the use made of it.
Hence, there is a possibility of non-distinctive signs acquiring secondary meaning in the course
of promotion activities: the moment the public is taught to perceive a given sign as an identifier
of commercial source, the sign's distinctiveness will no longer be denied. In this vein,
knowledge amongst the public is almost equated with distinctive character in court decisions51.
Furthermore, the question raising is to know whether a usual or common shape acquire
distinctiveness through the mechanism of secondary meaning.
We saw it; this kind of shape can perform trademark function only if they have immediately a
distinctive character. Let’s suppose a soap shape, very common. It is not performing the
distinctiveness function and several undertakings are using it. But if, for several reasons, there is
no more than one undertaking using these shape because there are no more competitors on the
market place, it could acquire distinctiveness because it is excluded neither in the law nor in the
case law.
In the Smiley case law52, the Court doesn’t exclude the possibility for common shapes to be
register as a trade mark. Indeed, in the paragraph 26 of the judgment, the Court asserts that “it
50
see, to that effect, Case C-210/96 Gut Springenheide and Tusky, paragraph 37
51
2009, The trademark Tower of Babel - dilution concepts in international, US and EC trademark law, Martin
Senftleben, IIC
52
CFI, 29th September 2009, Smiley Company SPRL,
33
must be borne in mind that, according to the case-law, a sign which is excessively simple and is
constituted by a basic geometrical figure, such as a circle, a line, a rectangle or a conventional
pentagon, is not, in itself, capable of conveying a message which consumers will be able to
remember, with the result that they will not regard it as a trade mark unless it has acquired
distinctive character through use”53. To find the secondary meaning, it is like to apply the article
7-1)b, the Court does not require a specific level of artistic creativity on the part of the
trademark owner. (It suffices that the trade mark should enable the relevant public to identify
the origin of the goods or services it covers and to distinguish them from those of other
undertakings).
b) The admission of distinctiveness
Two aspects have to be examined in order to determine whether the sign for which the
registration is sought is distinctive or is not. The examiner has to apparciate this regarding to the
products (i) and to the availability (ii) of the sign positioned on the product. Indeed, if several
operators are drawing a model of a product, it’s an aesthetic creation, and here the aesthetical
creation will not be able to acquire distinctiveness because of the number of operators using it.
i) The exigency of a position of the figurative sign on the product.
The aesthetic creation, which is not intrinsically distinctive, has to be positioned on the product
in order to acquire the distinctiveness required. Indeed, the secondary meaning, as we explain it
previously, permits the sign to perform the trade mark function thanks to the use made by its
owner on the market place. The relevant public should recognize the commercial origin of the
product seeing it.
Two questions are raising here. We are going to study them successively.
Is the “position mark” raising a new requirement of stability for signs lacking intrinsically
distinctiveness?
The second requirement for the trade mark registration is the exigency of a graphical
representation; it is stipulated Article 4 of the Council regulation54. This requirement is
reinforced under Art.26 of the CTMR, which requires an applicant for CTM registration to
53
Judgment of 12 September 2007 in Case T-304/05 Cain Cellars v OHIM (Representation of a pentagon),
paragraph 22.
54
Article 4(Signs of which a Community trade mark may consist) A Community trade mark may consist of any
signs capable of being represented graphically.
34
furnish the Office for Harmonisation in the Internal Market (OHIM) with a representation of the
trade mark.
The Board of Appeal (820/1999-3) seemed to impose a requirement of stability on the
basis of this formal condition. It was a case about a flexible net-bag which registration was
rejected because the shape was common use and not stable (“Its appearance will vary depending
on whether it is suspended or is placed on a surface, empty or full, open or closed. Owing to its
fluctuating form, the net-bag cannot be perceived by the consumers as an indication of the
origin of the product and cannot, consequently, constitute a mark”. ) However, this criterion of
stability appears nowhere in the community regulation.
But we can estimate that this requirement of stability is linked to the new category of
sign: the “position mark”.
Nevertheless, in two Court of First Instance sentences, the judge seemed to apply a
criterion of stability and fixity.
Hence, in the Glaverbel case (T 36/01) the sign of which the registration was sought was an
abstract design for application to the surface of glass products. The Court asserted that even if
the design claimed was complex and fanciful, it was not sufficient to establish its
distinctiveness. Indeed, these design qualities were “attributable to the ornamental and
decorative nature of the design's finish, rather than indicating the trade origin of the goods”.
Moreover, the impression conveyed by the design was not fixed (“It may be perceived very
differently according to the angle from which the goods are viewed, the brightness of the light
and the quality of the glass, and will not therefore enable the applicant's goods to be
distinguished from those having another trade origin”). For these combined reasons, the sign
was registered.
More recently, in the JOOP case law, (T-191/08) the registration was sought for a figurative
trade mark representing an exclamation mark, but it was rejected because the sign had only an
advertising function and was not a badge of origin. The judge added that “the leading request in
cause contains no indication as for the reproduction of the sign in a position stable and
determined on the products on which it would be affixed, in proportioned dimensions at these
products”.
The trade mark protection is determined when it’s applied for. The formal requirement of
registration is the graphical representation of the trade mark. The mark has to be fixed (it’s more
complex for the colours nuances) but the same function can’t be protected twice. This is very
important to fixe the mark. Is it the position mark acting in that way? If we just take a look at
the US legislation we can note that the term “position” is only use in the description on the
35
representation of the trade dress. In US, there is no provision about the design protection.
That’s why shape and packaging of products are protected under the trade dress legislation.
But this criterion of stability is not accepted by everyone. Few authors consider that it should be
ineffective. Indeed, it is not a legal requirement in the trademark law and Mr Albert Gallego ( a
French author) thinks that if we are requiring it as a supplementary condition, it means that the
shape lacking fixity is devoid of distinctiveness on principle. This French author thinks that it is
going against the non discriminatory principle between the different categories of trademarks
(principle which regularly reminds by different authors). Moreover, the distinctiveness of a sign
has to be appreciated case by case.
We have to wait the moment when the Court will have a clear position on the requirement of
stability. But whatever it happen, the judges can’t create a new requirement which will exclude
all the non stable sign from protection. It is a casual appreciation.
If we examine more the link existing between the stability and the position we are arriving to
our concept: the “position mark”.
The Court of First Instance in the Lange Uhren GmbH case 55 is the first one about the
“position mark”. Arnaud Folliard-Monguiral (French litigator for the OHIM) gave the first clear
definition of the “position marks” considering that the “position mark” can concerned either
products or services. They are defined by characteristics claims (colours, words, shape…)
according to a specific scheme56”.
In order to define the scope of protection of the mark, the sign has to be represented graphically
within its environment. A disclaimer (RMC, art. 37(2)) or a description (REMC, rule 3(3)) of
this representation permits to exclude some parts of the shape (those which are represented only
to specify the location of the mark) from the exclusive right. It is the same for colour marks for
which the Court requires a very precise and constant representation on the designated product57.
This requirement is justify by an overriding public interest58. The author uses the term constant
and here we can ask whether or not the word “constant” has the same meaning than the word
55
CFI, 14th September 2009, Lange Urhen GmbH, T-152/07
56
(« Ces marques de position, qui peuvent concerner aussi bien des produits que des services, se définissent par la
revendication de caractéristiques (couleurs, mots, motifs figuratifs, etc.) selon un agencement spécifique »).
« TPICE, arrêt cadran de montre et les marques de position », revue propriété industrielle, Novembre 2009, Arnaud
FOLLIARD-MONGUIRAL
57
ECJ, 24 June 2004, aff. C-49/02, Heidelberger Bauchemie, pt 33
58
ECJ, 6 May 2003, aff. C-104/01, Libertel, pt 54-55
36
“stability”. As far as I am concerned, I would answer yes. Therefore a “position mark” can only
be a sign positioning in a stable way on the product.
The other question raised in this part, is to know how the sign has to be used as a trademark
thanks to its position on the product?
In order to let its sign acquire distinctiveness through use, the undertaking has to position
it as a mark on the product. It is the use of the sign as a mark and not as an aesthetic creation in
a decorative purpose.
This distinction is essential for our purpose. The ECJ was the first to explain it giving us
some indications.
In the Stork case, the mark in litigation was the bi-dimensional representation of a 3-D
trade mark which was a sweet’s shape. But the Court assessed that a three-dimensional mark is
essentially different from its two-dimensional graphic representation. Of course the
representation could facilitate awareness of the mark by the relevant public where it enables the
essential elements of the three-dimensional shape of the product to be perceived. Furthermore,
the judge asserted that the identification of the product’s origin by the relevant consumer “must
be a result of the use of the mark as a trade mark”.
The 18th June 2002, in the Philips’ case, the Court had already used this expression: “Finally,
the identification, by the relevant class of persons, of the product as originating from a given
undertaking must be as a result of the use of the mark as a trade mark and thus as a result of the
nature and effect of it, which make it capable of distinguishing the product concerned from
those of other undertakings59”.
Also, in the Nestlé’s case, the Court alluded to this expression: “in regard to acquisition of
distinctive character through use, the identification, by the relevant class of persons, of the
product or service as originating from a given undertaking must be as a result of the use of the
mark as a trade mark60”.
Furthermore the court added, in the Storck case, that the sign need not necessarily have been
used independently. Actually there is no more restriction in the regulation than the solely use
made of the mark. It should be the use of the mark for “the purpose of the identification by the
relevant class of persons, of the product or service as originating from a given undertaking”. It is
sufficient that, in consequence of such use, the relevant class of persons actually perceive the
product or service, designated exclusively by the mark applied for, as originating from a given
59
C-299/99, paragraph 64
60
paragraph 26, C-353-03
37
undertaking (Nestlé, paragraph 29). However, not every use of the mark can be considered as
use of trademark. Hence, the use of two-dimensional representation of a 3-D mark should not be
admitted as a use of a mark (“Therefore, not every use of the mark, a fortiori use of a twodimensional representation of a three-dimensional mark, amounts necessarily to use as a mark”
paragraph 62).
ii) The exigency of the availability of the figurative sign positioned on the product
The sign has to comply more condition if it wants to be registered. Through the use, the sign
acquires distinctiveness, as we have seen. However it is only possible if there are not several
operators on the market using the product. However, here the problem of availability becomes a
very important hurdle.
When an undertaking positions the sign on the product as a mark, the sign enters the category of
“position mark”. It is the fact to position a sign in a trademark function. But this sign will not
acquire distinctiveness enough if it is not available
The ECJ applies the criterion developed previously of distinctiveness and even if there is no
different standard, in particular no stricter test, to be applied for 3-D shapes of goods than to
others types of trademarks, judges should keep in mind that the consumer perception is
different. Let us analyse the tabs’ case.
The tabs which the registration was applied for were not considered as distinctive enough.
On April 29, 2004, the ECJ handed down two judgments estimating that the marks which the
registration was sought for lacked sufficient distinctiveness because an average consumer would
not be able to associate a rectangular tablet with any particular manufacturer regardless of its
colour. It was the Procter and Gamble case law and the court also rejected the applicant’s
argument who estimated his tabs had acquired distinctiveness by use.
In reality, the tabs were not at all common. Indeed, the Court requires the shape should
depart significantly from the familiar form of the sector.
Thus, the three-dimensional configurations filed as trademarks in reality showed an entirely new
form of a product. If we compare the three-dimensional shapes of a ready-to-use portion of
detergent (it was the first) as the powder sold before, we can conclude that the sign was highly
distinctive even if its shape could be perceived as commonplace.
These tablets were successful but they were immediately copied by competitors. Several
injunctions were filed against the imitations by the owner of the shape and were all granted
based on the law against unfair competition. Nevertheless, the judge refused the protection. This
38
can explain why Jochen Pagenberg reports that “secondary meaning as a possibility of
indicating origin is impossible to prove in a situation where a new line of products has just
entered the market and is immediately copied by competitors61”.
Moreover the distinctive character must be established at the date of the last oral hearing.
So, the shape has to be distinctive before this date. Jochen Pagenberg considers that the fact
that competitors have used the mark for a certain period of time before the mark could be
registered, cannot of itself be a reason to reject the application of the original applicant
except if the applicant does not react at all against third-party use, a trademark may lose its
distinctive character after some time.
Should distinctiveness indeed depend on the possibility of obtaining preliminary relief in all
27 countries of the European Union before the date of registration? In the Lange Urhen GmbH
case law, the judge requires that the acquisition of distinctiveness should be proved in all the
Community and not only in a substantial part of this territory62.
And finally, is the fact that a word mark, a figurative mark or a three-dimensional mark is so
attractive that it is immediately copied by competitors an argument in favour of keeping the
respective mark free for the use of third parties, an argument that has been made in this context?
In this case, it will result very difficult for successful shape to acquire distinctiveness
through use even if its owner positioned this shape as a mark on the market place.
To sum up, positioning the mark take time, if the mark is not sufficiently distinctive it should be
necessary for its owner to let it acquire it. But lacked of distinctiveness does not mean lacked of
originality and this kind of sign could perform the decorative function and attract the public.
That’s why, the owner has to be protected against competitor’s unfair copies. Of course, there is
the law against unfair competition (passing of or “concurrence déloyale”) but it’s not sufficient.
Indeed, the owner of the shape has made some researches in order ton find a product’s
appearance which would be attractive and which would permit to distinguish his products.
That’s why, if the shape permits to the relevant consumer to distinguish the product from the
competitor’s one and if the owner of the shape sue the competitors because of their copies, it
would be reasonable to let it protect his shape with a trademark
61
“Trade dress and 3D trade mark- The neglected children of trade mark law?” Jochen Pagenberg
62
Paragraph 134 of this case: « qu’une marque ne pouvait être enregistrée en vertu de l’article 7, paragraphe 3, du
règlement n° 40/94 que si la preuve était rapportée qu’elle avait acquis, par l’usage qui en avait été fait, un
caractère distinctif dans la partie de la Communauté dans laquelle elle n’avait pas ab initio un tel caractère au
sens du paragraphe 1, sous b), du même article ».
39
II) The role of the secondary meaning (use of the mark in the market
place) in the effect of the right determination
The secondary meaning is, as we have just seen, the only possibility for a sign without
any intrinsically distinctiveness, to acquire it. However, this position of the sign by its proprietor
as a trademark is not without consequences on the scope of protection of the mark. Indeed, even
if the level of distinctiveness of the mark should not influence its protection in reality it does.
Let us analyse now in the following development first of all the influence of the use/secondary
meaning on the infringement appreciation (A) and then on the loss of right (B)
A) The position of the sign’s influence upon the infringement
The infringement is constituted by the attacks against the owner of a mark’s right. These
attacks can be, for example, the identical reproduction of the sign or the use of a similar one for
identical or similar products or services. If the mark is duplicated and this reproduction is used
for the same products for which it was registered the risk of confusion is not required here to
punish the infringer (art 9-1 (a) of the Council regulation). But if the mark is “just” reproduced
but not identically (it is more in a similar way) the risk of confusion is required to stop the
infringement.
In order to appreciate this risk of confusion, the fact that the mark was positioned so as to
acquire distinctiveness will be relevant (1). Furthermore, if the reproduced mark is not use in the
same position as the registered mark, it could not be considered as an infringement (2)
1) The appreciation of confusion risk for a sign positioned on the product
The article 9-1 of the Council Regulation n°207/2009 of 26 February 2009 on the
Community trade mark provides that “A Community trade mark shall confer on the proprietor
exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having
his consent from using in the course of trade:
(a) any sign which is identical with the Community trade mark in relation to goods or services
which are identical with those for which the Community trade mark is registered;
40
(b) any sign where, because of its identity with, or similarity to, the Community trade mark and
the identity or similarity of the goods or services covered by the Community trade mark and the
sign, there exists a likelihood of confusion on the part of the public; the likelihood of confusion
includes the likelihood of association between the sign and the trade mark;
(c) any sign which is identical with, or similar to, the Community trade mark in relation to
goods or services which are not similar to those for which the Community trade mark is
registered, where the latter has a reputation in the Community and where use of that sign
without due cause takes unfair advantage of, or is detrimental to, the distinctive character or
the repute of the Community trade mark.”
According to this regulation on trade marks, the exclusive right to a trade mark entails that only
the owner of the trade mark has the right to use the trade mark and nobody else is allowed to use
such a distinctive mark without his consent that is likely to cause confusion. Risk of confusion
arises when a target group identifies a product with another one because the former product is
promoted under the same or a similar kind of symbol.
The CFI, in the Laboratorios RTB case63, stated that the risk that “the public might
believe that the goods or services in question come from the same undertaking or, as the case
may be, from economically-linked undertakings, constitutes a likelihood of confusion”64.
This risk must be assessed globally taking into account all factors relevant to the circumstances
of the case.
This implies a sort of interdependence between all the factors taken into account (a lesser degree
of similarity between the goods or services may be offset by a greater degree of similarity
between the marks, and vice versa65).
The most important factor to appreciate the likelihood of confusion is the recognition of the
trade mark on the market and the degree of similarity between the mark and the sign and
between the goods or services identified. It is the overall image of the imitated mark which
should be likely to cause confusion with the complainant's registered device mark. This
appreciation will depend on the perception of the mark in the mind of the average consumer.
Indeed, it is, in principle, the final consumer’s point of view which permits appreciate the risk of
confusion at the moment of purchase66.Normally he perceives the mark as a whole and does not
proceed to analyse its various details (SABEL, paragraph 23). Furthermore, he is deemed to be
reasonably well informed and reasonably observant and circumspect. Then, the public will
63
T-156/03,9th July 2003, paragraph 61
64
Case C-39/97 Canon, paragraph 29; Case C-342/97 Lloyd Schuhfabrik Meyer, paragraph 17; and Case T-104/01
Oberhauser v OHIM - Petit Liberto (Fifties), paragraph 25
65
Canon, paragraph 17, and Lloyd Schuhfabrik Meyer, paragraph 19
66
Picasso/Picaro
41
rarely be able to make a direct comparison between the marks in question. That is why his
analysis of the risk of confusion will be based on the imperfect picture of the marks that he has
kept in his mind. Thus, the characteristics likely to raise confusion have more weight in the
image which remembers the public, than the differences.
Moreover, the risk of confusion constituting the specific condition of the protection of the
previous mark, the protection applies independently of the degree of distinctiveness of the sign.
In the Devinlec Développement Innovation Leclerc case, the judge asserted that
“
Although it is true that the more distinctive the earlier mark, the greater will be the likelihood
of confusion (Case C-251/95 SABEL, paragraph 24)[…]Since likelihood of confusion is the
specific prerequisite for protection of the earlier mark, that protection applies irrespective of
whether the earlier mark has only weak distinctiveness”67.
Thus, even if the previous trademark has a weak distinctiveness, it is possible that a confusion
risk arises. That is what the CFI stated in the Castellblanch case: “thus, even in a case involving
an earlier mark of weak distinctive character, there may be a likelihood of confusion on account,
in particular, of a similarity between the signs and between the goods or services covered”68. To
be registered a mark has to be distinctive nevertheless, all the distinguishing features have no
same capacity to fill the function of trademark69. There is a link between the distinctive power
of the trademark and its scope of protection. Indeed, a trademark which has a weak
distinctiveness performs less well the distinctive function than another with a high degree of
distinctiveness and the relevant public will remind it less easily. This was judged yet by the
Benelux Court of Justice in 1982 in the Juicy fruit case law.
It should also be borne in mind that the average consumer's level of attention is likely to vary
according to the category of goods or services in question (Lloyd Schuhfabrik Meyer, paragraph
26).
The CFI added in the Arsenal case that "it should be added that the question of the degree of
attention of the relevant public to be taken into account for assessing the likelihood of confusion
is different from the question whether circumstances subsequent to the purchase situation may
be relevant for assessing whether there has been a breach of trade mark rights, as was accepted,
in the case of the use of a sign identical to the trade mark”70. That’s why, arguments based on
67
CFI, 12th January 2006, T-147/03, Devinlec Développement Innovation Leclerc c/ OHMI, paragraph 110
68
CFI, 8th dec. 2005, T-29/04, Castellblanch c/ OHMI, paragraph 69
69
Propriété industrielle n° 6, Juin 2009, étude 12, La surprotection des marques faibles dans la jurisprudence
communautaire, Etude par José MONTEIRO directeur du département des marques de L'Oréal
70
Arsenal Football Club ECJ, C-206/01, Arsenal Football Club v Matthew Reed, November 12, 2002
42
post-sale confusion are not accepted on the basis that they can only be relevant in an action
concerning the violation of trade mark rights71.
In order to appreciate the confusion risk, a comparison between the signs has to be made.
The judge will compare the similarity between the signs and the products for which the
registration was granted. For the “position mark”, the judge should be also regard the position of
the sign responsible of the confusion risk with the registered previous mark. Indeed, the sign
alone can not be registered, it is its position on the product and its positioning by its owner as a
trade mark which can allow the registration. The mark was registered with a specific position on
the product that the graphical representation of the mark can showed. Hence, if the same mark is
used by a third person in another product or in another position there is no confusion possible.
It raises the question of the availability of the sign. Indeed, when the sign has acquired
distinctiveness through use, it is possible that it was not very original because as we saw
previously the secondary meaning will be necessary if the aesthetic function is not new. That is
to say, the competitors will want to use the same or a similar sign as the one registered because
it is common.
Furthermore, if these signs, although commonplace, acquire notoriety, those competitors will
want to use them always more. It was exactly what happened in the Adidas case when Adidas
competitors required the right to use stripes on their closes as a decorative way estimating that
this sign was common and as a consequence available for every one.
In his opinion for the Adidas case, the advocate general, Ruiz-Jarabo Colomer, reminds
that the “requirement of availability” is a German principle according to which “in addition to
the impediments associated with a lack of distinctive character, there are also other public
interest considerations which militate in favour of limiting the registration of certain signs so
that they may be used freely by all operators”72. In 1997, the Regional Court of Munich asked to
the ECJ whether the requirement of availability was compatible with Article 3(1)(c) of the
Directive. The Court answered that “the application of Article 3(1)(c) of the Directive does not
depend on there being a real, current or serious need to leave [a sign or indication] free … under
German case-law”. Nevertheless, the Court did not reject the principle and it is used to prohibit
the registration of descriptive signs or indications and to avoid monopolisation of such signs to
“ensure that the legitimate expectation of a company to use them freely is not infringed”73.
Moreover the ECJ asserted that the “competent authority must assess whether a geographical
71
EIPR, 2005, Significant case law from 2004 on the Community trade mark from the Court of First Instance, the
European Court of Justice and OHIM, Arnaud Folliard-Monguiral and David Rogers
72
Case C-363/99 Koninklijke KPN Nederland, paragraph 52 of the opinion
73
Ruiz-Jarabo Colomer
43
name in respect of which application for registration as a trade mark is made designates a place
which is currently associated in the mind of the relevant class of persons with the category of
goods concerned, or whether it is reasonable to assume that such an association may be
established in the future74”. Since then, the principle was repeatedly applied in the case-laws and
developed because it is intrinsically linked with the general interest.
In the Adidas case law, the Court stated that the requirement of availability was not a
factor to appreciate the confusion risk which should be based only on the perception by the
public of the goods covered by the mark of the proprietor and the goods covered by the sign
used by the third party. However, if the registered mark (which is constituted by a common
sign) need use to acquire distinctiveness, the problem of the availability of the sign raises.
Indeed, if the sign is common place, all the operators will wanted to use it on their products
especially if this sign is a famous trademark (like the three stripes of Adidas). In addition, “the
availability of the concepts is compatible with an unavailability of a concrete representation of
such a concept”. Thus, even if the three stripes are registered, the competitors can still use the
striped if their configuration (or their layout) on the product allows eliminating the confusion
risk towards the Adidas position mark75. That is what the Court said in this case: “signs which
must, generally, remain available for all economic operators are likely to be used abusively with
a view to creating confusion in the mind of the consumer. If, in such a context, the third party
could rely on the requirement of availability to use a sign which is nevertheless similar to the
trade mark freely without the proprietor of the latter being able to oppose that use by pleading
likelihood of confusion, the effective application of Article 5(1) of the Directive would be
undermined.
That consideration applies in particular to stripe motifs. As Adidas recognised in the
introduction to its observations, stripe motifs as such are available and may therefore be placed
in a vast number of ways on sports and leisure garments by all operators. Nonetheless, the
competitors of Adidas cannot be authorised to infringe the three-stripe logo registered by
Adidas by placing on the sports and leisure garments marketed by them stripe motifs
which are so similar to that registered by Adidas that there is a likelihood of confusion in
the mind of the public”(paragraph 31 et 32). This means that the three stripes are not available
only if they are positioned on the same way. Indeed, more than the sign itself (which is not
intrinsically distinctive) it is its position which is the principal aspect of its distinctiveness.
74
ECJ, 4 mai 1999, aff. C-108/97 et C-109/97, Chiemsee, paragraph 31
75
Propriété industrielle n° 6, Juin 2008, comm. 41 , CJCE, Adidas : « l'impératif de disponibilité n'affecte pas la
portée de protection », Comment by Arnaud Folliard-Monguiral
44
But this assessment is rejected when the position mark is a shape because it is intrinsically
linked to the product and in this case the physical position on the product does not matter and
the judge will appreciate if the use of the mark is a use as a mark.
2) The appreciation
appreciation of the use of the mark as a mark
To be punished, the third person who uses the sign without any agreement should use it
in its trademark function that is to say in the purpose of distinguishing goods and services of one
undertaking from other goods or services of another undertaking.
As we saw in the first part of this explanation, very often the “position mark” designates a sign
which is quite common. Then it is its position on the product which lets it acquire the
distinctiveness because the consumer will get used to see it. But, the position can have another
meaning. It is the fact for the proprietor of the sign to position it on the market place like a
mark. The sign will acquire thanks to this position the distinctive function. I explained it
previously but here which it is interesting, it is the influence of this “virtual position” of the
infringement characterization.
To precise this idea of “use of the mark as a mark”, it will be studied the refusal to
consider the use of a sign placed on a another product as a use of a mark (a) and then we will
focus on the distinction between the use of the sign in its distinctive function and in its
decorative function (b).
a. The refusal to consider the use of a sign positioned on another product as a use
of a mark
In the Adam Opel case, raises the problem of the definition of the use of a mark as a
mark. There were on the one hand Adam Opel AG is a motor manufacturer, proprietor of a
national figurative mark, registered in Germany on 10 April 1990 for, inter alia, motor vehicles
and toys, and on the other hand Autec AG manufactures, remote-controlled scale model cars,
which it markets under the trade mark ‘Cartronic’. Among these remote-controlled scale model
cars, there was a model depicting one of the Opel coupé which bear the Opel logo. The
Cartronic trade mark with the symbol ®, was clearly visible. Nevertheless, Opel sued Autec
asking that Autec is prohibited from commercially affixing the Opel logo on scale models of
vehicles. Opel was considering that this use of its logo on toys constituted an infringement of
that trade mark because it constituted a use as a trade mark and the relevant public would
assume that the manufacturer of scale models of vehicles of a given mark manufactures and
45
distributes them under a licence granted by the proprietor of the trade mark. The Landgericht
Nürnberg-Fürth was also thinking that Autec used the Opel logo “qua trade mark”.
Then, they decided to stay the national procedure and to stay the proceedings and referred to the
Court of Justice for a preliminary ruling. The national judge asked whether “the use of a trade
mark registered also for “toys” constitute use as a trade mark for the purposes of Article 5(l)(a)
of the Trade Mark Directive if the manufacturer of a toy model car copies a real car in a
reduced scale, including the trade mark of the proprietor of the trade mark as applied to the
real car, and markets it?”.
The question here is to know whether the fact that a third party places a sign identical to
the registered figurative mark on its product without authorisation from the trade mark
proprietor is a use which the trade mark proprietor is entitled to prevent.
The Court asserts that “the affixing by a third party of a sign identical to a trade mark registered
for toys to scale models of vehicles cannot be prohibited under Article 5(1)(a) of the directive
(Article 9 (1) (a) of the CTMR) unless it affects or is liable to affect the functions of that trade
mark”76. Judges have to analyse if the relevant public will perceive the sign affixed on toys as
an indication of their origin, but, in this case no. Thus, it will always depend on the case and
judges should appreciate every situation in concreto taking into account the relevant public
perception. In this specific case, the third party, Autec, was not using the trade mark for the
same services as Opel (Autec didn’t sell vehicles) so there was no use of the Opel logo as a
trade mark.
Here is the example that, in certain case, the use of the mark positioning on another product is
not the use of trademark; then, the use of the same sign as the registered mark but for another
services is not a use of a mark.
Furthermore, when the sign registered has different functions, it could be used by a third party if
this party uses it non in its distinctive function but in its decorative function. That is to say that
here the concept of “position mark” is not use in its physical meaning. It is the virtual meaning
of the position which is important when we study the fact that the mark has to be used as a
mark.
76
Opel case, paragraph 22
46
b. The distinction between the use of the sign in its distinctive function and in its
decorative function.
To understand the meaning of this part, it is important to take an example. And the most
relevant example is the Adidas case77.
Adidas AG is the proprietor of figurative trade marks composed of three vertical, parallel
stripes of equal width which are featured on the sides of sports and leisure garments in a colour
which contrasts with the basic colour of those garments. Adidas granted an exclusive licence for
the Benelux to Adidas Benelux BV. However, Marca Mode, C&A, H&M and Vendex had
begun to market sports and leisure garments featuring two parallel stripes, the colour of which
contrasts with the basic colour of those garments. That is why, Adidas asked to the judge the
prohibition of the use by those undertakings of any sign consisting of the three-stripe logo
registered by Adidas or a motif similar to it, such as the motif with two parallel stripes used by
those undertakings. Nevertheless some of those undertakings brought application before the
same judge for a declaration that they are free to place a similar feature on their clothes because
it was only decorative purpose. Finally the conflict went before the Hoge Raad der Nederlanden
(Supreme Court of the Netherlands) which decided to stay the proceedings and refer the
following questions to the Court for a preliminary ruling:
“1.
In the determination of the extent to which protection should be given to a trade mark
formed by a sign which does not in itself have any distinctive character or by a designation
which corresponds to the description in Article 3(1)(c) of the Directive … but which has
become a trade mark through the process of becoming customary and has been registered,
should account be taken of the general interest in ensuring that the availability of given signs is
not unduly restricted for other traders offering the goods or services concerned?
2. If the answer to Question 1 is in the affirmative: does it make any difference whether the
signs which are referred to therein and which are to be held available are seen by the relevant
public as being signs used to distinguish goods or merely to embellish them?”
The ECJ reminds that the use by competitors of the stripes can be prohibited by the article
5(1)(b) even if this sign is perceived as aesthetical and ornamental. If this sign is perceived «
exclusively as a decoration» the exclusive right will not be enforceable.
Indeed:
77
ECJ, Adidas, April 10th, 2008, C-102/07
47
-Either this use exclusively ornamental is not a use for “products” or “for the purpose of
distinguishing the goods or services” as the regulation is required it, (V. CJCE, 11 sept. 2007,
aff. C-17/06, Céline, pt 20 “it is clear from the scheme of Article 5 of the directive that the use
of a sign in relation to goods or services within the meaning of Article 5(1) and (2) is used for
the purpose of distinguishing the goods or services in question, whereas Article 5(5) is directed
at ‘the use which is made of a sign for purposes other than distinguishing the goods or services’.
Indeed, in the BMW case, the judge added that: “In that connection, it is true that the scope of
application of Article 5(1) and (2) of the directive, on the one hand, and Article 5(5), on the
other, depends on whether the trade mark is used for the purpose of distinguishing the goods or
services in question as originating from a particular undertaking, that is to say, as a trade mark
as such, or whether it is used for other purposes”78.
-Or, the perception of the sign as an ornamentation prevents the establishment of a link with
another previous trademark (CJCE, 23 oct. 2003, aff. C-408/01, Adidas, pt 40 “the fact that a
sign is viewed as an embellishment by the relevant section of the public is not, in itself, an
obstacle to the protection conferred by Article 5(2) of the Directive where the degree of
similarity is none the less such that the relevant section of the public establishes a link between
the sign and the mark.
By contrast, where, according to a finding of fact by the national court, the relevant section of
the public views the sign purely as an embellishment, it necessarily does not establish any link
with a registered mark. That therefore means that the degree of similarity between the sign and
the mark is not sufficient for such a link to be established.”
B) The influence
influence of the secondary meaning upon the loss of right
risk
The article 15 in the CTMR states that:
“1. If, within a period of five years following registration, the proprietor has not put the
Community trade mark to genuine use in the Community in connection with the goods or
services in respect of which it is registered, or if such use has been suspended during an
uninterrupted period of five years, the Community trade mark shall be subject to the sanctions
provided for in this Regulation, unless there are proper reasons for non use.
The following shall also constitute use within the meaning of the first subparagraph:
(a) Use of the Community trade mark in a form differing in elements which do not alter the
distinctive character of the mark in the form in which it was registered;
78
Case C-63/97 BMW, paragraph 38
48
(b) Affixing of the Community trade mark to goods or to the packaging thereof in the
Community solely for export purposes.
2. Use of the Community trade mark with the consent of the proprietor shall be deemed to
constitute use by the proprietor.”
Furthermore, the article 51 (1) (a) of the CTMR provides that:
“1. The rights of the proprietor of the Community trade mark shall be declared to be revoked on
application to the Office or on the basis of a counterclaim in infringement proceedings:
(a) if, within a continuous period of five years, the trade mark has not been put to genuine use
in the Community in connection with the goods or services in respect of which it is registered,
and there are no proper reasons for non-use.”
In the regulation, the loss of the right is due to an absence of use the mark in the course
of trade. But the ECJ added that the use of the mark should be the use of a mark as a mark. For
nominative mark or for mark which are perceived as inherently distinctive, the problem does not
rise because the mark will always be used as a trademark. However, for those mark which
acquire distinctiveness through use it could be more complicated. Indeed, the sign, which are
first of all use as a decorative item and become distinctive thanks to its positioning on the
product as a trademark, can be used only in a decorative way (let us imagine for example a
shape exposes in a museum). Here, the owner of the “position mark” does not position it as a
trade mark anymore. That means that a sign which acquires distinctiveness through use thanks
to the positioning of the sign as a trademark, has to be use it after the registration in the same
way and keep its positioning.
The CTMR requires a genuine use in the Community in connection with the goods or services
in respect of which the sign is registered. In France, the requirement is a serious exploitation.
The use here means true, real exploitation of the trademark79. Quantitatively, this exploitation
does not need to be important. Furthermore, the mark has to be exploited for products and
services for which the registration was sought. Then, the use should be made by the owner or by
a third person with the owner’s consent.
In the Community regulation, it is a very close concept.
In Europe there is no obligation of use priority registration. But after it, it is necessary to use
the trademark during a period of five years. The trademark must be genuine use as a trademark
79
Jean-Christophe GALLOUX, Droit de la propriété industrielle, 2000
49
under the consent of the proprietor in the course of trade. The criterion of genuine use was
established by the Minimax case law 80 .
In the RTB case law, the Judge stated that genuine use implies real use of the mark on
the market concerned for the purpose of identifying goods or services that is to say exercising its
essential function, which is to identify the commercial origin of the goods or services, thus
enabling the consumer who acquired them to repeat the experience, if it proves to be positive, or
to avoid it, if it proves to be negative, on the occasion of a subsequent purchase.
Genuine use is therefore to be regarded as excluding minimal or insufficient use for the purpose
of determining that a mark is being put to real, effective use on a given market. In that regard,
even if it is the owner's intention to make real use of his trade mark, if the trade mark is not
objectively present on the market in a manner that is effective, consistent over time and stable in
terms of the configuration of the sign, so that it cannot be perceived by consumers as an
indication of the origin of the goods or services in question, there is no genuine use of the trade
mark.” Then, to prove the existence of genuine use, the proofs of use are to consist of
indications concerning the place, time, extent and nature of the use.
The order of the ECJ in La Mer states that "even minimal use can therefore be sufficient to
qualify as genuine, on condition that it is deemed to be justified, in the economic sector
concerned, for the purpose of preserving or creating market share for the goods or services
protected by the mark81".
It means that a use does not have to be particularly quantitatively significant to be characterised
as genuine use. In the case Hipovit/Hippoviton, the CFI sets out the factors relevant for an
assessment of genuine use as being the volume of commercial activity, the production or
marketing capacities or the degree of diversification of the undertaking exploiting the mark82.
The ratio of the sales figures generated for products under the mark to the total turnover of the
mark owner are a minor factor and are not decisive in an assessment of genuine use83.
"The smaller the commercial volume of the exploitation of the mark, the more necessary it is for
the party opposing new registration to produce additional evidence to dispel possible doubts as
to its genuineness.84"
80
ECJ, C-40/01
81
ECJ, Order C-259/02 La Mer Technology Inc v Laboratoires Goemar SA, January 27, 2004
82
See ECJ, C-383/99 (Baby-Dry ), Procter & Gamble Co v OHIM, September 20, 2001.Hippovit/Hipovition
83
European Intellectual Property Review, 2005, Significant case law from 2004 on the Community trade mark
from the Court of First Instance, the European Court of Justice and OHIM, Arnaud Folliard-Monguiral and David
Rogers
84
ECJ, C-191/01, October 23, 2003, Doublemint
50
It is not sufficient to have internal use for the requirement of use purposes. Preparations of use
are not sufficient as well and internal preparation for use does not constitute use.
Indeed, genuine use of a trade mark exclude artificial use for the purpose of maintaining the
mark on the register; genuine use means that the mark must be present in a substantial part of
the territory where it is protected.85 If your TM is genuine, it depends on the quantity of member
states where your TM has to be used. They are currently two countries which are concluded that
x countries is not enough.
Furthermore, the trademark should be used in the course of trade. In two recent case-laws, the
ECJ assessed that a trade mark is put to genuine use where a non-profit-making association uses
the trade mark, in its relations with the public, in announcements of forthcoming events, on
business papers and on advertising material and where the association’s members wear badges
featuring that trade mark when collecting and distributing donations86. Then, the next recent
case, when the items are not distributed in any way with the aim of penetrating the market for
goods in the same class as the mark was registered for. In those circumstances, affixing the
mark to those items does not contribute to creating an outlet for those items or to distinguishing,
in the interest of the customer, those items from the goods of other undertakings, that is why it is
not genuine use of that mark in respect of the class covering those items87.
Then, the use has to be for the goods and services for which the mark is registered (use
as it was registered). But when it is about a product shape, as the shape is intrinsically linked to
the product there is no problem for this point. But if it is a drawn for a specific kind of product
the use has to be for a category of specific item mentioned in the registration (for example it is
not good enough if the trademark registration is for clothes and is used for choose.
For example, this is the case for a mark registered for "fruit and vegetable juices without
fermentation (except must)", and used for "concentrated juices of various fruits", even though
the goods of the registration and the goods used form a homogenous category of products as to
their nature and end use88.
Another example is a mark registered for "pharmaceutical products" and used for
"pharmaceutical products against calcium deficiencies and progressive decalcification of the
bone"89.
85
Case T-79/00 Rewe-Zentral v OHIM (LITE) [2002] ECR II-705, paragraph 26
86
ECJ, 9 December 2008, C-442/07
87
ECJ,15th January 2009, Silberquelle C-495/07
88
Vitafrut/Vitafruit
89
Board of Appeal, R 032/2003-1 (Collagen Aesthetics/Calogen ), February 4, 2004
51
That is to say that if the owner of the mark positions the sign, registered for a certain kind of
product, on another kind of product, it will be not a use as it is required in the regulation. Then,
let us we go further in this logic, we have seen that the position of the mark is the principal way
of allowing the mark to acquire distinctiveness, so if the proprietor of the mark positions it in
another way as the registration it will not be the same use.
Moreover, the use has to be made by the proprietor or with his consent. It’s easy even if the
proprietor is not in position to use his trademark. An express agreement is not require for using
a trade mark between a holding company and subsidiary company (related companies). The use
with licensees is possible and even if the use is misleading the trademark right could still be
maintained.
Thus, the most important when the mark has acquired distinctiveness with the secondary
meaning and could be qualified as a “position mark”, is to use it as a mark, in its original
position and on the product for which the registration was sought.
Hence, the “position mark” is a new category of mark, but its existence is not going
against the important principle held by the Court: the principle of non discrimination between
all the trademarks.
The requirements for its registration are the same than for the other marks. The only important
distinction is that it is not only the sign in itself which is part of the trademark but the sign and
its position and the owner of “position mark” has to keep this specificity in mind because it can
influence the determination of the infringement or it can lead to the loss of right.
52
TABLE DE DES MATIERES
REMERCIEMENTS……………………………………………………………………...............3
SOMMAIRE………………………………………………………………………………………4
INTRODUCTION………………………………………………………………………………...5
I. the role of the position of the sign in the trade mark right constitution…………...…..…........11
A.Existence of the position (positionable) sign…………………………...………………......11
1. The nominative mark exclusion…………………………………………………….....11
a) The definition of the nominative mark………….……………………………....…….11
b) The weak trademark…………………………………………………………………..12
2.
The legal exclusion for figurative mark………………………………………...…….15
- The exclusion of the shapes which is necessary to obtain a technical result
- The exclusion of the shapes which result from the nature of the good
B. The distinctiveness of a "position mark"…………………………………………...……...20
1. The position of a figurative sign irrelevant for the requirement on distinctiveness......20
a)The distinction between the distinctive function and aesthetic function of the
figurative sign......................................................................................................................21
b) The admission of the figurative sign distinctiveness....................................................24
i) The requirement of a new aesthetic creation constituting the
figurative sign………………………………………………………………………........24
ii) The requirement of a new distinctiveness function (cf. by the products
and the availability….………………………………………….…………………………27
2. The position of the figurative sign on the product: a condition for the distinctiveness
of this sign…………………………………………………...…………………….....…....…31
a) The distinction, thanks to the use of the sign, between the original function of
the sign and the function of figurative mark……………………………….................…32
b) The admission of the distinctiveness…………………………………..…………..…34
i) The exigency of a position of the figurative sign on the product……………...34
-the requirement of a fixed sign
-the use of the sign as a mark
ii) The exigency of the availability of the figurative sign positioned
53
on the product…..………….………………………………………...………..…38
II) The role of the secondary meaning/ use in the effect of the right determination………....….40
A. The position of the sign's influence upon the infringment...................................................40
1. The appreciation of the confusion risk for a positioned on the product........................40
2. The appreciation of the use of the mark as a mark........................................................45
a) The refusal to consider the use of a sign positioned on another product as a
use of a mark.....................................................................................................................45
b) The distinction between the use of the sign in its distinctive function and in its
decorative function............................................................................................................47
B. Influence of the secondary meaning upon the loss of right risk....……………………. ....…..48
TABLE DE DES MATIERES………………………………………………………………......53
ANNEXE…………………………………………………………………………………...…...55
BIBLIOGRAPHIE………………………………………………………………………..……..57
54
APPENDIX
Position mark examples
Typical German position mark
CFI, 14th September 2009, Lange Urhen GmbH, T-152/07 (refused for protection)
GC, June15th 2010, X Technology Swiss GmbH v. OHIM, Case T-547/08 (refused for protection)
The trade mark consists of the words "ESSO" and "EXPRESS" in the colours red (Pantone 485) and white applied
to the exterior vertical surfaces of canopies of vehicle service stations as depicted in the illustrative representation attached to the application;
the reliefs, legs and underside of the canopy depicted (including those elements shown in broken lines) do not form part of the trade mark and
are included only to show the positioning of the trade mark.. Indication of colour: Red (Pantone 485).
Position mark consisting of the representation of a frame in navy blue including white dots around the frame as per the above
design. The trademark will be placed inside the visible part of collar shirts or sweaters as depicted in the above design. The black broken lines
are not part of the trademark but determine the position of the mark in the inside of the visible part of collars of any kind of shirt or sweater.
55
Louboutin trademark registered in the category “other” but which can be associated to the position mar category.
Position mark consisting of the representation of a stripe bisected lengthwise by another broken stripe. The mark consists
of a stripe in a shade of beige bisected lengthwise by another broken stripe appearing in red as per the above design. The black broken lines are
not part of the trademark but determine the position of the mark in the inside of the collar of any kind of shirt (t-shirt, polo shirt, classic shirt,
etc.).
The trademark is a position mark. The mark consists of two parallel lines positioned on the outside surface
of the upper part of a shoe. The first line runs from the middle of the sole edge of a shoe and slopes backwards towards the instep of a shoe. The
second line runs parallel with the first line and continues in a curve backwards along the counter of a shoe to the heel of a shoe and ends at the
sole edge of a shoe. The dotted line marks the position of the trademark and does not form part of the mark.
Lloyd shoes – red stripe underside the shoe / on the bottom side of the shoe
Register-Nr. DPMA: 39912356 Adidas – three stripes on the trousers
56
BIBLIOGRAPHY
*BOOKS :
- Joanna SCHMIDT-SZALEWSKI & Jean-Luc PIERRE, «Droit de la propriété industrielle »
-Jean-Christophe GALLOUX, Droit de la propriété industrielle, 2000
*ARTICLES:
- Alyson FIRTH, “Shapes as trade marks: public policy, functional consideration and consumer
perception”, EIPR, 2001
- Arnaud FOLLIARD-MONGUIRAL
- “The protection of shapes by the Community trade mark”, EIPR, 2003
- Propr. ind. 2008, comm. 55
-« TPICE, arrêt cadran de montre et les marques de position », revue propriété
industrielle, Novembre 2009
- Adidas : « l'impératif de disponibilité n'affecte pas la portée de protection », Propriété
industrielle n° 6, Juin 2008, comm. 41 , CJCE,
- Arnaud FOLLIARD-MONGUIRAL and David ROGERS, “Significant case law from 2004 on
the Community trade mark from the Court of First Instance, the European Court of Justice and
OHIM”, EIPR, 2005
- José MONTEIRO directeur du département des marques de L'Oréal, « La surprotection des
marques faibles dans la jurisprudence communautaire », Propriété industrielle n° 6, Juin 2009,
étude 12
- Albert GALLEGO
- Jacob JACONIAH, “The requirement for registration and protection of non-traditional marks
in the European Union and Tanzania”, IIC, 2009
57
- Robert KOVAR, Marque, August 2009,
- Jochen PAGENBERG “Trade dress and 3D trade mark- The neglected children of trade mark
law?”, IIC, 2009
- Martin SENFTLEBEN, “The trademark Tower of Babel - dilution concepts in international,
US and EC trademark law”, IIC, 2009
- Group de travail chargé de l’examen de la règle 3.4) à 6) du règlement d’exécution du traité de
Singapour sur le droit des marques Genève, 28 – 29 juin 2010
http://www.wipo.int/export/sites/www/sct/en/comments/pdf/sct17/ch_1.pdf
- Comité permanent du droit des marques, des dessins et modèles industriels et des indications
géographiques : représentation des marques non traditionnelles domaines de convergence.
http://www.wipo.int/export/sites/www/sct/fr/meetings/pdf/wipo_strad_inf_3.pdf
*CASE LAWS
*EUROPEAN COURT OF JUSTICE CASE LAWS:
-ECJ, 29 September 1998 Canon, C-39/97
-ECJ, 23 February 1999 BMW, C-63/97
-ECJ, 4th May 1999, Chiemsee, C-108/97 et C-109/97,
-ECJ, 18th June 2002 Philips v. Remington, C-299/99
-ECJ, 12th November 2002, Arsenal Football Club v Matthew Reed, C-206/01
-ECJ, 8th April 2003, C-53/01, Linde
-ECJ, 6th May 2003, Libertel, C-104/01
-ECJ, 23rd October 2003, Doublemint, C-191/01
-ECJ, Minimax, C-40/01
-ECJ, 27th January 2004 La Mer Technology Inc v Laboratoires Goemar SA, C-259/02,
-ECJ, 29th April 2004, Procter & Gamble Company, C-473/01P and C-474/01P,
-ECJ, 24th June 2004, Heidelberger Bauchemie, C-49/02
-ECJ, 16th September 2004, SAT.1 c/ OHIM, C-329/02
-ECJ, 7th October 2004, Mag lite, C-136/02
-ECJ, 30th June 2005, Eurocermex
-ECJ, 12th January 2006, Deutsche Sisi-Werke Gmbh, C-173/06
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-ECJ, 22th June 2006, Stork
-ECJ, 20th September 2007, Benetton Group SpA v.G-Star International BV, C-371/06
-ECJ, 25th January 2007, Opel, C-48/05
-ECJ, 15th January 2009, Silberquelle C-495/07
- ECJ, Adidas, April 10th, 2008, C-102/07
*GENERAL COURT CASE LAWS:
-CFI, 27th February 2002, Rewe-Zentral v OHIM ,T-79/00
-CFI, 7th February 2002, Mag Instrument v OHMI, T-88/00
-CFI, KWS Saat v OHIM (Shade of orange), T-173/00
-CFI, 19th September 2001, Procter and Gamble v. OHMI, T-129/00
-CFI, 9th October 2002, Glaverbel, T-36/01
-CFI, 6th March 2003, DaimlerChrysler Corporation, T-128/01
-CFI, 9th July 2003, Pérez-Díaz v Commission, T-156/03,
-CFI, 24th November 2004, Henkel v OHMI, T-393/02
- CFI, 8th dec. 2005, Castellblanch c/ OHMI, T-29/04,
-CFI, 12th January 2006, Devinlec Développement Innovation Leclerc c/ OHMI, T-147/03
-CFI, 11th July 2007,Georgia Pacific, T-28/04
-CFI, 10th October 2007, Bang and Olufsen, T-460/05
-CFI, 12th September 2007, Cain Cellars v OHIM, T_304/05
-CFI, 21st October 2008, Cassegrain case law, T-73/06, 21
-CFI, 14th September 2009, Lange Urhen GmbH, T-152/07
-CFI, 29th September 2009, Smiley Company SPRL, T-139/08
-CFI, 30 septembre 2009, JOOP, T-191/08
- GC, June15th 2010, X Technology Swiss GmbH v. OHIM, Case T-547/08
* BOARD OF APPEAL DECISIONS:
- Board of Appeal, May 7th, 2002, R-938/2000-1
-First Board of appeal, September 10th, 2008, Bang and Olufsen v. OHIM
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