One interesting case from Europe focusing our attention on the challenges related to the registration of position trademarks.
The Austrian company Think Schuhwerk GmbH filed a European trademark application for the following position trademark with this description – shoes with laces, at the ends of whose laces red needles are arranged:
The EUIPO refused to register this mark based on absolute grounds, namely art. 7(1)(b) of Regulation 207/2009 which prohibits registration of not distinctive signs.
As a general rule, product appearance can be a trademark but only if deviates significantly from the norm or customary in the sector typical for the relevant product.
The EUIPO considered the shoelaces as not distinctive enough in order to represent a trademark. They have only a decorative character. What’s more, there are products with similar characteristics on the market.
The decision was appealed but upheld by the General Court of the European Union ( T‑298/19).
According to the Court, the distinctive character of a sign does not depend on how new and original it is but on the fact to what extent it deviates from what is customary in the industry.
The applicant’s argument that all other designs of shoelaces become free to use by competitors was dismissed by the Court as not having something in common with the grounds for refusal.
This case comes to reminds us how difficult registration of position trademarks can be. The sign should be significantly distinctive in order to have chances for successful registration.