Leifheit AG filed a position trademark application described as follows: « the position mark is composed by four green squares apposed on the down face of a balance, in each corner, close to the border. » The trademark claims class 9, namely scales.
This trademark has been refused by the EUIPO considering its lack of distinctiveness. Indeed, they argued that the sign caused confusion with the product covered and was a usual form in this business field.
The applicant appealed this decision.
In this decision, the Court invokes two main arguments to refuse the registration of this mark:
1- The sign aspect would be confused with the product covered
Leifheit AG contested the fact that the trademark and the products covered are inseparable.
For that purpose, the applicant bring to the fore three specific arguments:
- The presence of four corners on a scale does not mean that the four representing squares are a characteristic of the product which would not be understood as a distinctive element by the consumer.
- The application was made for a very specific sign in a determined part of the product and is constituted by four squares surrounded by three other kinds of squares.
- This application is a position trademark and the nature of the sign will improve its distinctiveness as it could affect the consumer perception.
The Court rejected these arguments considering that to assess the distinctiveness of a trademark it is necessary to use the same requirements for all trademarks without taking into consideration the category of the trademark.
Therefore, to be distinctive a sign must be different from the business standards. Otherwise, the trademark does not fulfill its principal function, namely the indication of origin.
In this matter, the Court considers that it is not the case as four corners for a scale is something very common.
This point would be the same, even if and contrary to what is claimed by the applicant, the aspect of the product was not a square. Indeed, for technical reasons, a scale needs to have four supports to be stable.
Moreover, the Court recalls that the specificity of a position trademark is in the fact that there are dotted lines in order to designate the specific position of the trademark on the product. Therefore, the applicant cannot argue that the sign can be differentiated from the product considering its positioning.
2-The consumer will not be able to understand the sign as a trademark.
The Court argued that the consumer will consider the sign like an ornament of the bottom of the scale which is the common position of feet for scales.
For that purpose, the Court recalls that to assess the existence of the distinctive character it is necessary to take into consideration the global impression of the trademark vis a vis of the consumer.
In the hereby case, the Court refers to its constant jurisprudence to explain that a basic geometric figure, like a square, is not sufficiently distinctive to be considered by the consumer as a trademark but merely like an ornament. It is the same thing considering the color used as it is a basic one without any reference of a specific Panton. Thus, the Court rejects the argument of the applicant who considered that the fact that the sign is in color green, which is a bright color, will lead the consumer to identify the mark as a distinctive sign.
Finally, the Court recalls that even if the use of green feet for scales was a specification of the applicant, the originality of a sign is not sufficient to lead to the registration as a trademark, it is also necessary that the trademark differ from common aspects of the product covered in order to fulfill its indication of origin.
Consequently, the Court rejected the trademark application.
With this decision, it may be observed that the European Court is very cautious regarding the assessment of the distinctiveness of a position trademark and insists to the fact that it is an essential characteristic.
Therefore, the Court recalls that all the elements necessary for the assessment of the distinctiveness of other categories of trademarks need to also be determinate for position trademarks.
From a practical standpoint, this decision encourages rigor and caution in the determination of a position trademark in order to assure that the consumer will consider it as an indication of origin. Thus, for this category of trademark we would recommend to future applicant to enforce the distinctiveness of the trademark by the following elements:
- To use a stylized sign which is not a common shape;
- To use a specific color with a pantone;
- To make a strong difference between the part to protect and the dotted lines.
Indeed, the specificity of a position mark being its apposition on a good, it is necessary to insure that the sign to be protect is clearly delimitate and detached from its support in order to be considered as distinctive.