Know where to place your [trade] mark

Image source: everydayplus – 123RF.com

Understanding position trade marks

A position trade mark refers to the specific placement of a mark on a product or where it is affixed to a product, distinguishing it from others in the marketplace.

Unlike traditional trade marks, which may include logos or words, position trade marks focus on where a mark such as a symbol, design, or logo is situated on a product. Think of the three stripes on adidas sneakers, the red tab on Levi’s jeans pockets, or the red soles of Louboutin shoes. The placement of these marks are not only unique but also integral to the brand’s identity.

When slipping on a pair of iconic Dr Martens boots, it’s not only the sturdy leather and air-cushioned sole that stand out, it’s that distinctive yellow stitching, a small but significant feature that has become synonymous with the brand. This unique placement is a prime example of a position trade mark.

Amani Patel, Senior Associate at Spoor & Fisher

The rigorous road to registration

It is important to note that when registering a position trade mark, it is essential to clearly define the position of the mark and its size or proportion relative to the goods on which it is used.

Much like any other trade mark, a position trade mark should fulfil the basic requirements, namely that it should be distinctive and indicative of the origin of the goods. In other words, such a mark should significantly deviate from the customary practices or usages in the particular trade.

As such, position trade marks are not easily registrable as, in the absence of further elements, consumers usually do not assume the origin of goods based on the shape or position of a mark.

In South Africa, a position trade mark must be distinctive and non-functional, to qualify for registration. The Companies and Intellectual Property Commission (CIPC) oversees the registration process, which involves filing an application, an examination to establish distinctiveness, publication for opposition, and ultimately, registration if unopposed.

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Notable case studies

Case law provides valuable insights for businesses seeking to protect their brand elements and emphasize the importance of tactical planning in trade mark applications:

Adidas vs Pep Stores

Supplied image: Adidas' three-stripe mark

Background: The global sportswear manufacturer, Adidas AG, owns trade mark registrations for its well-known three-stripe mark in relation to, inter alia, footwear.
• Case details: Adidas instituted trade mark infringement and passing-off proceedings against Pepkor Retail Ltd for the sale of trainers and soccer boots which featured two-stripe and four-stripe designs, claiming that it was confusingly similar to their three-stripe mark.

• Ruling: In terms of trade mark infringement, the court delivered its judgment in 2013, limiting its consideration to the marks themselves and held that Pepkor’s four-stripe trainers were confusingly similar to Adidas’ three-stripe trade marks. The two-stripe marks were, however, held to be sufficiently different that consumer confusion was unlikely and the shoes bearing this mark were therefore held not to infringe Adidas’ trade marks.

  In considering passing-off, the court considered the entire “get-up” of the products in determining if there is a likelihood of confusion. In this case, the court held that the two-stripe shoes were clearly identified with a brand name other than adidas, and that the stripes in the context of the rest of the get-up were not sufficiently similar to Adidas’ shoes to constitute passing-off.

  In light of the distinctiveness of Adidas’ three-stripe mark, the market and consumers of the respective products (and their overlap), and the similarity of Pepkor’s shoes to Adidas’, Adidas was successful in their passing-off claim in relation to the four-stripe shoes.

• Implications: This judgment dealt with various aspects of trade mark infringement and passing-off, specifically as it relates to well-known marks. The court highlighted the importance of the distinctiveness of a mark in matters of this nature, and the impact that substantial goodwill and reputation in a mark can have in increasing the distinctiveness of a trade mark.

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Loro Piana SpA

• Background: Loro Piana is an Italian company specialising in clothing and textile products, claiming to be the world’s largest cashmere manufacturer. It was founded in 1924 and is owned by French multinational holding and conglomerate LVMH.

• Case details: The applicant in this matter (Loro Piana SpA) attempted to obtain registration in respect of a position mark consisting of a band with a knot, ribbons, as well as metal pendants in the shape of a padlock and a ring nut applied to the upper part of the shoe; for footwear in class 25.

• Ruling: The European Union Intellectual Property Office (EUIPO) rejected the application in terms of Article 7(1)(b) due to lack of distinctive character. The EUIPO stated that one needs to consider whether the mark is appreciated for its decorative value and that only if the mark deviated significantly from the norm or from customs in the sector thereby indicating origin, would it be considered distinctive and registrable.

  The office accordingly rejected the application on the basis that no concrete evidence of inherent distinctive has been provided, that the mark in question comprised of decorative and non-distinctive elements which would not allow consumers to associate an origin of the goods.

• Implications: This ruling notes the requirements of distinctiveness and consumer perception.

Dr Martens yellow stitching

Supplied image: The iconic yellow stitching on Dr Martens boots

• Background: The iconic yellow stitching on Dr Martens boots has long been a hallmark of the brand. Recognised globally, this stitching is not just a decorative feature but a significant aspect of the brand’s identity.

• Case Details: In a landmark ruling, the District Court of The Hague determined that the yellow stitching on Dr Martens boots constitutes a valid position trade mark. The case was brought against a shoe store, Van Haren, which had produced similar lace-up boots featuring comparable yellow stitching.

• Ruling: The court emphasised the distinctive character of the yellow stitching, highlighting that it was well recognised by the public as a unique feature of Dr Martens boots. The decision reinforced that such distinctiveness is crucial for a position mark to be upheld as valid.

• Implications: This ruling underscores the importance of unique and recognisable features in securing trade mark protection. For Dr Martens, the decision not only protected their brand identity but also set a precedent for other companies seeking to protect similar distinctive features.

Distinctive designs and the difficulties of using shapes as trade marks

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Supplied image: Vans v Paredes

Vans v Paredes

• Background: Vans Inc., a major player in the sports footwear market, faced competition from a company named Paredes, which sought to register a position mark for footwear that closely resembled Vans’ own designs.

• Case details: Vans argued that Paredes’ mark was too similar to their own, potentially causing confusion among consumers. The contention centred around the specific placement and appearance of the marks on the footwear.

• Ruling: The court ultimately sided with Paredes, ruling that the mark could be registered. The decision was based on the principle that the evaluation of trade marks must focus on the marks as they are filed, not on their potential use or different angles of presentation.

• Implications: This case highlights the importance of clear and distinctive positioning in trade mark applications. It serves as a reminder that companies must ensure their marks are recognisable as applied for and registered to secure and defend their trade mark rights effectively.

Supplied image: Vans faced competition from a company named Paredes

‘I Love’ Sign on t-shirt

Supplied image: I heart T-shirt design

• Background: The ‘I Love’ logo is a popular design element often seen on various merchandise, including t-shirts. An applicant sought to register this logo as a position mark on the left-hand chest area of t-shirts.

• Case Details: The EUIPO examiner rejected the application, arguing that the ‘I Love’ logo was merely a non-distinctive advertising slogan. The applicant contended that positioning the logo on the chest would give it distinctiveness.

• Ruling: The EUIPO confirmed the examiner’s previous decision, stating that the logo lacked the distinctiveness required for a position mark. It was reasoned that the logo was a simple and widely used advertising message, and its positioning did not imbue it with the necessary distinctiveness.

• Implications: This ruling indicates the challenges in registering common slogans or advertising messages as position marks.

From case law, it is clear that position trade marks are more than just a legal formality – they are a testament to a brand’s ingenuity and foresight.

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Requirements for obtaining position trade mark registrations

The key elements in applying for the registration of a position trade mark include:

• Distinctiveness: The mark must be distinctive or have acquired distinctiveness through use. Common phrases or symbols, unless used in a highly distinctive manner, are unlikely to meet this criterion.
  
• Perception by the public: The mark must be capable of being recognised by the relevant public as indicating the origin of the goods. Simply placing a mark in a specific location on a product does not necessarily grant it distinctiveness.
  
• Functionality: The mark should not serve a functional purpose that affects the product’s use.
  
• Consistency in usage: To enhance the chances of registration, the applicant must demonstrate that the position mark has been consistently used in the marketplace and has become associated with their brand over time.

Position marks and the African landscape

While African intellectual property registries may have different practices, the principles of distinctiveness and public perception are universally relevant. Businesses looking to secure position trade marks in Africa should ensure that their marks are not only unique but also perceived by consumers as indicative of their brand.

Conclusion

Although securing protection for position trade marks may be challenging, in a world where every detail counts, securing the distinctive placement of a mark can be the difference between blending in and standing out. Brand owners that recognise and act on this potential will not only protect their products but also solidify their place in the market as leaders in innovation.

As the digital age progresses, the importance of non-traditional trade marks will only grow. Brand owners are encouraged to explore position trade marks as part of their comprehensive IP strategy, ensuring their unique product features are safeguarded against imitation.