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In this article we address the concept of “position trademark“, differentiating it from shape trademark and providing clarity on when it is possible to register it. We will specifically review the case involving the Dutch company Van Haren Schoenen B.V., owner of several shoe stores in the Netherlands, up against the world-famous fashion house Christian Louboutin SAS.
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A position trademark is an “unconventional” trademark that originated in case law. A position mark is a distinctive sign consisting of a word, graphic motif or three-dimensional figure for which registration is requested in a specific and defined position on a given product.
In order to be eligible for registration, the trademark must have a strong distinctive nature, designed to distinguish it from other trademarks and to eliminate any chance of confusion on consumers. This distinctiveness must be assessed in light of the goods for which registration is sought and the perception of the relevant public (General Court of the European Union, January 16, 2014, T-433/12 Steiff v. OHIM).
Within the application for registration, the position trademark must be depicted by means of a representation that adequately and clearly indicates the position and relative size with reference to the relevant goods. Anything that is not part of the subject matter of the registration must be excluded through dotted or dashed lines. Some description explaining how the sign is affixed to the goods may be added.
The shape mark is expressly regulated by both the European legislation – Art. 4 of the European Union Trademark Regulation (EUMR) – and the Italian legislation – Art. 7 of the Industrial Property Code. These regulations provide for the possibility of registering the shape of a product or its packaging, given that they are capable of distinguishing the goods or services of a company and can be represented in the register in a way that allows the competent office and the public to clearly and precisely determine the subject matter of the protection conferred by the owner.
It should be noted that the same regulations mentioned above -in Articles 7 and 9, respectively – restrict the freedom to register the form of a product. It is indeed not possible to register shape trademarks exclusively consisting of the shape:
From the above, it is clear that the shape trademark can certainly be protected. However, registration must meet the above conditions, as the average consumer tends not to recognize the origin of the product from its shape or packaging, without there being a graphic or textual sign that exactly identifies the product itself. For a shape to be registered as a trademark, it must either have strong distinctiveness in itself or have already acquired it by reason of use.
The Van Haren v. Louboutin case (C-163/16, June 12, 2018) concerns the French fashion house’s very famous red shoe sole. The Court of Justice of the European Union confirmed the validity of the registration of the red sole, declaring the autonomy and distinctiveness of the red color. After all, in the application for registration, the red sole was clearly highlighted in relation to the shoe, which is depicted dotted.
Now let’s take a step back.
Before the Hague Court, Van Haren challenged the validity of Louboutin’s trademark arguing that it corresponded to the shape of the product and was therefore lacking in distinctiveness. Louboutin, in turn, defended itself by claiming that the registered trademark did not consist solely of a shape, but included a color as well.
As there was no clear definition of the notion of shape within the Trademarks Directive, the Hague Court referred to the CJEU for a preliminary ruling. Specifically, it asked the CJEU whether the notion of shape provided in Article 3(1)(e)(iii) of Directive 2008/95/EC – identical in lettering to Article 7(1)(e)(iii) of the EUMR – was limited to three-dimensional features of the product such as contours, dimensions and volume, or whether this provision also covered other nonthree-dimensional features, such as color. The Hague Court thus asked whether the red color applied to a specific position of the shoe (the sole) could be considered a shape trademark within the meaning of the above article.
The CJEU issued a ruling stating that, given that the legislation fails to provide a definition of shape, the meaning of this notion had to be determined by taking into consideration its usual meaning in everyday language – that is, in the sense that it designates a set of lines or contours that delimit the product in space. As such, color cannot be considered as the shape of the product. Although it is true that the shape of a product plays a role in delimiting the color in space, the sign cannot be considered to consist of a shape, since the registration is not intended to protect the shape but the application of a color on a specific part of the product.
In this case, the trademark does not pertain to a specific shape of shoe sole, and this is inferred from the description of the trademark, which explicitly states that the outline of the shoe – depicted dashed – is not part of the trademark but is intended purely to show the placement of the red color. In addition, the red sole has acquired a strong distinctive character that allows consumers to recognize the origin of the products it distinguishes.
In position trademarks, the most problematic issue concerns their distinctiveness. As mentioned, the average consumer generally does not recognize the commercial origin of goods from signs that may be confused with the appearance of the goods themselves. Such signs will be distinctive only if they diverge considerably and significantly from the standards and customs of the relevant industry.
It often happens that the competent office rejects the registration of a position trademark in the first instance, in order to require the owner to provide evidence demonstrating the reputation of the trademark and thus its distinctiveness in the relevant market.
The evidence of acquired distinctiveness will be examined as a whole, taking into particular account the market share held by the trademark, the intensity, frequency and duration of use of the trademark. The evidence will have to be such as to convince the Office that a significant portion of the relevant public is able, by virtue of that position trademark, to identify the goods in question as coming from a particular company.
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