There are a lot of brands which have acquired popularity and distinctiveness based on the way their labels and logos are placed on a given product. But did you know that these brands have the right to claim monopoly over the positioning of their label on products? Well, a ‘position trademark’, falling under the category of ‘unconventional trademarks’, allows proprietors to claim rights over the way their label is placed on a product, based on its distinctiveness. Having said the same, the legality of position marks is still comparatively new and unexplored by jurisdictions around the world.
The World Intellectual Property Organization (WIPO) defines ‘position trademark’ as ‘a sign, represented graphically, positioned on a particular part of a product in a constant size or particular proportion to the product’. Hence, a position trade mark consists of two aspects – the mark itself and the position/ placement of the mark on a product. In other words, WIPO recognizes a position mark as a ‘constant element of an identical size placed on a product in a fixed position’. Since the application for registration of such a trade mark is based primarily on the placement or ‘position’ of the mark, a description detailing this position is the foremost requirement. It is pertinent to note that position marks would likely not be registrable if the description indicates that the placement of the mark on a product is variable. In order to claim monopoly over the positioning of a trade mark, the applicant is required to establish the fact that the logo along with its position on their product is distinctive enough to serve as a source identifier.
It is interesting to note how various deciding bodies have adjudicated upon the distinctiveness of a position mark. A few contrasting examples are discussed below for a clearer picture:
- In 2010, German toy maker Steiff, applied for a trade mark registration based on the position of a metal button along with a yellow flag with their logo, fixated on the ear of their teddy bears. The Office for Harmonization in the Internal Market (OHIM) of the EUIPO, while rejecting Steiff’s application, put forth that the yellow flag along with a metal button is ‘devoid of any distinctive character’ and hence is not sufficient to indicate the ‘commercial origin’ of the toys. Pictorial representations of Steiff’s teddy bear are as below:
- In 2011, the OHIM while rejecting the application of Austrian shoe company, Think Schuhwerk, ruled that red-tip shoelaces are not sufficiently distinctive to be accepted for registration as a position trade mark. A graphical representation of Schuhwerk’s red-tip shoelaces is as below:
- In 2013, the European Court of Justice (ECJ) adopted a more liberal approach to adjudge upon the distinctiveness of a position mark while deciding the infringement case filed by Levi Strauss against Colloseum Holding. Levi’s is already the registered proprietor of a composite trademark of their ‘red tab label’ placed along the pockets of various denim goods, along with the brand name. Colloseum Holding also started manufacturing jeans with a similar red label placed in the same way, but with their own brand name. Levi’s filed the trademark infringement case based on the same. The ECJ opined that ‘red label constitutes an integral part of the Levi’s brand, even though it is not used separately’. Pictorial representations of Levi’s red tab label are as below:
- In 2018, the ECJ ruled that the famous red-sole of Christian Louboutin’s high heeled women’s shoes is in fact a position mark. The Judges put forth that ‘the mark does not relate to a specific shape of sole for high-heeled shoes since the description of that mark explicitly states that the contour of the shoe does not form part of the mark and is intended purely to show the positioning of the red colour covered by the registration.’ Pictorial representations of Christian Louboutin’s red-soled high heels are as below:
The aforementioned case studies only go on to prove how the topic of distinctiveness of a position trade mark is, more often than not, dependent on the discretion of judges and hence varies from one case to the other. It has been seen that courts are hesitant in accepting the possibility of ‘acquired distinctiveness’ of a position mark – however, that trend appears to be changing now. One of the longest legal battles based on position trademarks, which also sees the courts accepting the validity of the principle of ‘acquired distinctiveness’ is the case of Shoe Branding Europe BVBA v Adidas and OHIM.
This case is considered to be one of the landmark judgments in the sphere of unconventional trademarks and more specifically, of position trademarks. Adidas had filed an opposition against BVBA (a German shoe manufacturing company) claiming that the latter’s trademark application for ‘2 stripe design’, for footwear, (image 1) is ‘confusingly similar’ to Adidas’ prior registered and well-known ‘3 stripe design’ (image 2). Pictorial representations of the competing marks are as below:
The opposition panel of OHIM eventually decided that the two marks can be distinguished based on the difference in inclination/ spaces between the stripes. However, Adidas appealed against this decision before the EU General Court, which thereafter opined that the three stripes widely used by Adidas had in fact acquired distinctiveness, and hence, BVBA’s two stripe design would most definitely adversely impact Adidas’ reputation. Continuing with the long string of appeals, BVBA appealed before the Court of Justice of the European Union, although in vain. BVBA was relentless and was determined to defeat Adidas to uphold their rights. Going forward, BVBA filed an independent suit before the EUIPO challenging the registrability of Adidas’ 3 stripe mark, claiming that the same lacked distinctiveness and the characteristics of a source identifier. BVBA managed to win the case after all, wherein Adidas’ 3 stripe mark was ruled to be an ‘ordinary figurative mark’ and not a distinctive pattern. Adidas was unable to establish that they had acquired distinctiveness across all the countries of the European Union, and hence, their registration of the 3 stripe mark was cancelled in 2019.
Although the concept of position trademark is well-established and still growing, it is still in its nascent stage in India. From the aforementioned cases we notice how the EUIPO has been able to explore multiple aspects of a position trademark and the legal ambit of unconventional trademarks is broadening with every passing case.