17.11.2021: ECJ confirms lack of distinctiveness for red lace ends
One of the permissible trademark forms is the so-called "position mark", i. e. a sign that is always to be applied in the same position on a product, whereby the registration is concerned in particular with the manner of application or arrangement of the sign on the product.
The registration of the position mark "red lace ends" of an Austrian shoe manufacturer was finally rejected by the European Court of Justice (ECJ) for lack of distinctiveness. The ECJ concluded that the sign intended as a positional mark (red end of shoelace) does not differ significantly from basic shapes commonly used in trade.
The reasoning was that the perception of a position mark is influenced by the nature of the sign applied for, especially if the appearance merges with the product itself (= shoelace as a part of the shoe). Novelty or originality are not decisive criteria for assessing the distinctiveness of a position mark.
Practical tip:
Only a position mark that deviates significantly from the norm or customary in the industry, and thus fulfills its essential function of identifying origin, has distinctive character - a necessary condition for the successful registration of a trademark.