'Positional' colour mark refused registration

European Union
In X Technology Swiss GmbH v Office for Harmonization in the Internal Market (OHIM) (Case T-547/08, June 15 2010), the General Court has held that an orange colouring of the toe of a sock could not be registered as a trademark because it lacked distinctiveness.
 
On January 13 2007 X Technology Swiss GmbH applied to register a figurative trademark consisting of an orange colouring of the toe of a sock in respect of "clothing, namely hosiery, socks and stockings" in Class 25 of the Nice Classification. The application contained the following description:
 
"The positional mark is characterized by an orange coloration, of the shade Pantone 16-1359 TPX, in the form of a hood covering the toe of each article of hosiery. It does not cover the toes entirely; it features a limit, which viewed from the back and the side, appears essentially to be horizontal. The mark always appears in sharp colour contrast to the remainder of the article of hosiery and is always in the same place."
 
On April 24 2008 the OHIM examiner refused the application on the grounds that the mark was devoid of distinctive character. The Board of Appeal of OHIM confirmed these findings on October 6 2008, stating that the mark was a presentation of the product dictated by aesthetic and functional considerations and that the description was not sufficiently precise. X Technology appealed to the General Court.
 
Before the court, X Technology alleged that the board had made an error as to the nature of the mark. X Technology pointed out that the mark was a 'positional mark' - that is, a sign placed in a precise manner on the surface, or on part of the surface, of a product. It also argued that the mark was distinctive, particularly in light of the fact that:
  • the positioning, shape and colour of the mark were not imposed by technical or functional constraints; and
  • X Technology was the first company to use the colour shade applied for on socks.
The General Court dismissed the action. First, it held that there was no provision in the Community Trademark Regulation (40/94), now the Community Trademark Regulation (207/2009), that referred to 'positional marks' as a specific category of marks and that, in any case, the fact that a mark is a 'positional mark' is irrelevant for the purpose of assessing its distinctive character. According to the court, the mark applied for was a type of figurative or three-dimensional mark that was indistinguishable from the appearance of the goods at issue.
 
Further, the court pointed out that the relevant public had a rather low degree of attentiveness with regard to the goods concerned. This conclusion was based on the fact that articles of hosiery are not usually tried on before purchase - contrary to articles of clothing and footwear, for which consumers will wish to establish, before purchase, whether they meet their expectations from a functional and aesthetic point of view.
 
Finally, the court stated it was common practice for manufacturers’ marks to be placed on socks. However, such marks consist of word and figurative elements, which are better suited to indicate the commercial original of goods than the mark applied for.
 
The decision highlights the difficulties in registering a colour mark on the EU level. Here, X Technology clearly attempted to represent the relevant colour in the position that it will occupy on the products. However, it made an error in trying to argue that its mark was a ‘positional mark’. Moreover, none of X Technology's assertions and arguments were substantiated by evidence - a fatal mistake in sensitive cases such as those involving non-traditional trademarks.
 
Franck Soutoul and Jean-Philippe Bresson, INLEX IP EXPERTISE, Paris

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