It is not any mark that a manufacturer places on goods that is capable of being given trademark protection, the General Court of the European Union has recently affirmed. Those marks that lack a distinctive character cannot be registered as a Community trademark and enjoy exclusive EU wide protection, this court concluded.

EU law grants any natural or legal person the right to obtain a Community trademark through registration. Such a mark may consist of any sign capable of being represented graphically such as words, personal names, designs, letters, numerals, the shape of goods or of their packaging provided that such signs are capable of distinguishing the goods or services of one undertaking from those of others. A trademark must therefore serve to assist customers in identifying a manufacturer’s product from that of another.

A German soft toy manufacturer, Steiff, requested the Community trade mark office (OHIM) to register as a Community trademark the position of the attachment of a metal button, shiny or mat, to the middle of the ear of any soft toy with ears, and the position of the attachment of a fabric label in an elongated rectangular shape with such a button. The manufacturer was not interested in obtaining protection for the button itself or the label attached by means of the button itself but only for the position of the attachment of such button and label.

The OHIM refused to register such marks maintaining that they were devoid of distinctive character and they did not enable consumers to recognise the commercial origin of the products, that is to say, that the product emanated from a particular manufacturer rather than from another. The German manufacturer challenged OHIM’s decisions before the General Court, claiming that the office had wrongly held that the marks applied for were devoid of distinctive character.

The court disagreed with the manufacturer’s viewpoint, maintaining that the marks for which protection was being sought, did not have the minimum degree of distinctive character necessary to be registered as Community trademarks. It observed that the marks could not be disassociated from the soft toys themselves.

The fixation of buttons and labels to the ears of soft toys is a common combination

The court also noted that buttons and small labels constitute one of the normal component parts of soft toys and that consumers are used to a great diversity in such products, their designs and possible configuration. The fixation of buttons and labels to the ears of soft toys is a common combination, perceived by consumers as a decorative element, or even as a functional one and cannot be regarded as exceptional. Consumers will not therefore consider such marks as being indicative of commercial origin. The court also considered it as irrelevant that Steiff may be the sole manufacturer to attach a shiny or mat round metal button to the ears of soft toys or a fabric label in the form of an elongated rectangle in the middle of the ear of soft toys by means of a button.

It is therefore amply clear that for a trademark to be afforded exclusive protection as a Community trademark, it must serve its primary purpose – that of distinguishing a product from another. Any mark which is bereft of such character will not be afforded such protection!

Mariosa Vella Cardona is a freelance legal consultant specialising in European law, competition law, consumer law and intellectual property law.


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