Another position mark is held to lack distinctive character

European Union
In Rosenruist - Gestão e serviços Lda v Office for Harmonisation in the Internal Market (OHIM) (Case T-388/09, September 28 2010), the General Court has upheld a decision of the Second Board of Appeal of OHIM in which the latter had found that a figurative mark consisting of two curves on a pocket lacked distinctive character.

Rosenruist - Gestão e serviços Lda, a Portuguese company, applied to register the following device as a Community trademark (CTM):

The mark was described as follows:

"Two Curves Crossed in One Point Design inserted in a pocket; the mark consists of a decorative stitching made of Two Curves Crossed in One Point Design inserted in a pocket; one of the curves is characterised by an arched form, drawn with a fine stroke, while the second one is characterised by a sinusoidal form, drawn with a thick stroke; the unevenly broken lines represent the perimeter of the pocket to which applicant makes no claim and which serves only to indicate the position of the mark on the pocket."

The application covered goods in Classes 18 and 25 of the Nice Classification.
The OHIM examiner refused to register the mark on the grounds that it lacked distinctiveness. The Second Board of Appeal of OHIM affirmed, noting that the mark applied for was a 'position mark' consisting of a stitched pattern that was a variation of a pattern commonly used on pockets.   
Rosenruist appealed to the General Court, alleging that OHIM’s decision was in violation of Article 7(1)(b) of the Community Trademark Regulation (207/2009). In particular, Rosenruist asserted that OHIM had erred in finding that the mark was purely decorative and was a common feature of the goods in question. In contrast, Rosenruist claimed that the mark had originality and a minimum degree of distinctive character.
The General Court rejected Rosenruist's argument that the board had erred in finding that the mark would not “trigger a visual stimulus” enabling consumers to recognise the origin of the goods. In doing so, the court made some interesting points:
  • The contested decision did not need to contain a differentiated analysis of each of the goods in question. The analysis of the relevant public's perception in respect of the relevant category of clothing was sufficient.
  • The fact that the mark may be perceived as elegant or may convey the idea of movement did not mean that it was distinctive. 
  • The fact that similar position marks had been accepted for registration did not mean that this type of mark had been recognised as having intrinsic distinctive character. The minimum degree of distinctiveness required for registration must be assessed in light of the circumstances of each case.
  • A position mark needs a certain degree of originality to attract the consumers' attention. However, the mark at issue would not be perceived as anything more than a decoration.
  • The board, in stating that the mark would not trigger a ‘visual stimulus’, did not apply more stringent criteria for assessing distinctive character to figurative marks than to word marks.
  • The burden of proving that a mark is distinctive lies with the applicant, not with OHIM.  
  • The standards applied by OHIM to assess the distinctiveness of a mark cannot be based on past decisions, but must be based on the particular application under review.
  • The fact that national authorities have found that the mark at issue was distinctive was irrelevant, as the CTM regime is autonomous.
The General Court thus concluded that the mark did not have any characteristic element or eye-catching feature that was likely to confer a minimum degree of distinctive character and enable consumers to perceive the mark as anything other than a typical decoration for goods in Classes 18 and 25.
Eleni Lappa, Drakopoulos Law Firm, Athens

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