Office for Harmonization in the Internal Market (Trade Marks and Designs) Position Trade Marks 7 th Liaison Meeting on Trade Marks 22 May 2012

Office for Harmonization in the Internal Market (Trade Marks and Designs) Filing requirements: position marks Position marks are signs positioned on a particular part of a product in a constant size or particular proportion to the product. The sign must be represented graphically. As it is aimed to protect the placement (or position) of the mark, a mark description detailing its positioning is a formality requirement. Position mark; green ring positioned between a light bulb base's electric connectors.

Office for Harmonization in the Internal Market (Trade Marks and Designs) Filing Requirements – position marks A mark description is mandatory for Community trade mark applications that have the mark type other (including position marks). If the required description is not submitted, the mark should be refused, unless the applicant submits other clarifications within the time limit (e.g.: no description is submitted but the applicant clarifies that they really wanted a different mark type).

Office for Harmonization in the Internal Market (Trade Marks and Designs) Filing Requirements – position marks Where a position mark covers some goods for which the positioning is clear and other goods, for which the positioning would not be clear, a formality deficiency must be notified in respect of those goods on which the mark could not (clearly) be positioned in the way specified in the mark description. The same applies for position marks applied for in respect of services: Since services are not tangible, how can the mark can be positioned on them? Clear explanations required. If the application is not limited to such goods for which the positioning is clear, the application must be rejected for those goods/services for which the positioning is doubtful/impossible.

Office for Harmonization in the Internal Market (Trade Marks and Designs) Filing requirements: tracer marks Tracer marks are coloured lines or threads applied to certain products. These marks are popular in textile industry. Other examples are coloured lines on hoses or cables. Preferably the mark description should contain the term tracer mark; colours, if any, must be indicated in words. Mark Description: Golden band incorporated into a light- coloured functional band for curtains, drapes, table covers and similar goods as an identifying marking.

Office for Harmonization in the Internal Market (Trade Marks and Designs) Absolute Grounds - Distinctiveness The trademark consists of the colours blue, yellow, red and grey, which are applied to the surfaces of a petrol station, with the "PETROM" logo affixed. Accepted on absolute grounds.

Office for Harmonization in the Internal Market (Trade Marks and Designs) Non Distinctive Positional Mark CTM – The mark consists of the arrangement of nail heads in groups of three on the underside of a shoe heel around a part of the perimeter thereof) in class 25 BoA Decision in Case R 437/ – mark is unremarkable and not distinctive.

Office for Harmonization in the Internal Market (Trade Marks and Designs) Absolute Grounds: Distinctiveness Criteria General Court Case T- 547/08 The positional mark is an orange colouration, Pantone TPX, covering the toe of each article of hosiery. The mark appears in sharp colour contrast to the remainder of the article of hosiery and is always in the same place.

Office for Harmonization in the Internal Market (Trade Marks and Designs) Absolute Grounds: Distinctiveness Criteria General Court Case T-547/08 Court held that the sign is indistinguishable from the appearance of the product itself. Applying similar criteria as for 3D marks the mark was refused. No evidence to suggest that the colouring of this part of the product would normally be perceived as having trade mark character.

Office for Harmonization in the Internal Market (Trade Marks and Designs) Absolute Grounds: Distinctiveness Criteria General Court Case T152/07 Mark consists of the position of the circular and rectangular fields on a watch face. Mark is not independent or distinguishable from the form or design of the product. Not substantially different from other designs on the market.