By Titiksha Sinha and Siddhant Manchanda
Introduction
In today’s world of short-lived attention span, brand essence has to be encapsulated in a single glance. Since businesses fight for attention in a crowded consumer market, creating visual identity by strategic placement of marks can prove to be a potent tool. These marks go beyond just the design or logo itself, and instead focus on the distinctive positioning of the trade mark as a source identifier for the brand.
Some key examples of successful position marks include the red soles on Christian Louboutin shoes (
) and the three-stripe design on Adidas footwear (
). In these cases, the placement of the colored sole or stripe pattern has become so closely associated with the brand that it serves to distinguish the products from competitors.
The World Intellectual Property Organization has defined ‘position trade mark’ as a sign represented graphically and positioned on a particular part of a product in a constant size or particular proportion to the product. Therefore, a position mark has two aspects-
- The mark itself; and
- The position/placement of the mark on the product (which has to be described in detail in the application).
Even though the statutory protection of such marks is still unexplored in India, it has been briefly discussed in other jurisdictions, specifically in European Union. Compared to other non-traditional marks like scents or textures, position marks may be easier to register as distinctiveness can be demonstrated through the consistent and prominent placement on the product. However, trade mark offices still examine each case individually to determine if the positioning is truly serving as a source identifier for consumers.
Stance of Position Mark in Different Jurisdictions:
- Stance of Position Mark in European Union:
With effect from 2017, the EU has recognized ‘Position Marks’ as a separate form of trade marks. According to Article 3(3) (d) EUTMIR, position marks are trademarks consisting of the specific way in which the mark is placed on or affixed to the product. [1] The motive behind application of position mark is to seek protection for a specific way of placing or affixing an element on a product.When evaluating position marks, the consideration applied to shape marks are pertinent as well. Specifically, the examiner needs to determine whether the typical consumer can distinguish the sign from the standard look of the products. Additionally, it is important to assess whether the placement of the mark on the goods will be perceived by the consumers as indicating a trademark context.
As per EU Law, this type of mark must be represented by submitting a reproduction that identifies appropriately the position of the mark and its size or proportion with respect to the relevant goods. The elements that do not form part of the subject matter of the registration must be visually disclaimed, preferably by broken or dotted lines. A description that accords with the representation of the mark may be added to indicate how the sign is affixed to the goods.
Example of accepted position mark is: A figurative element placed on the outer surface of the upper part of a shoe, extending lengthwise from the center of the cuff of the shoe down to the sole (EU TM No. 8586489 dated October 01, 2009 in Class 25). The dotted line shows the position of the trade mark on the shoe, and does not form part of the trade mark. (
)[2] In case of Christian Louboutin SAS v. Van Haren Schoenen BV[3] , the European Court of Justice clarified that the trademark does not pertain to a specific shape or color of the shoe sole inferred from the description of the trademark. The trademark which explicitly states that the outline of the shoe is not part of the trademark and is intended purely to protect the placement of the red color on a specific position of the shoes, instead of protecting the shape of the shoe (
)Position marks are meant to protect the distinctive placement of a mark on a product. However, in a renowned case in the UK[4] , the red dot on Tefal woks and pans, was initially claimed to be a position mark but was later clarified to be a figurative mark. This was mainly because UK does not specifically acknowledge position marks.
- Stance of Position Mark in European Union:
According to US laws on Trademarks, a label at a distinctive location and of a different shape can be considered as a mark only when enough evidence is produced that the particular shape and the particular location serves to indicate origin to consumers.
For example,
the mark consists of a small market or tab affixed to the exterior of the garment at the hip pocket.[5]Examples of protected elements in the United States include the distinctive checkerboard pattern on Vans sneakers, the unique lid design of Dreyer’s ice cream, and the design elements of Nike Jordans. These elements have been registered as trademarks, highlighting the importance of position marks in US trademark law.
- Stance of Position Mark in Brazil:
The Brazilian Patent and Trademark Office (BPTO) has unveiled the regulatory framework for the protection of so-called position trademarks since September, 2021. Ordinance/BPTO/PR No. 37/021, sets forth the registrability of marks in the position trademark form of submission.
In accordance with Article 1:
A distinctive whole that is capable of identifying goods or services and distinguishing them from ones that are identical, similar or related will be registrable as a position trademark, provided that:
I – it is formed by the application of a sign in a unique and specific position on a given support; and
II – the application of the sign in the mentioned position on the support can be dissociated from a technical or functional effect.Thus, as the legal protection is only for the trademark, and not for the product (nor its design) where the mark is placed, it must be represented, for registration purposes, through the presentation of a support (figure, design or image) that is capable of clearly showing the details of the trademark (its exact presentation, position, colour, size and proportion in relation to the product on which it is to be placed).
- Stance of Position Mark in India:
The Indian Trademark Regime has followed the European Union’s stance on graphical representation for trademarks, making registration of non-conventional trademarks more rigorous in India compared to the United States. However, unlike in the European Union, position marks have not been specifically discussed in India, and there is limited literature available as of now.
In India, the law on position marks may be derived from the definitions provided in the Trademarks Act, 1999, which includes a mark that can be represented graphically and distinguishes goods or services of one person from those of others. The definition of a “mark” under Section 2(1)(m) of the Act is inclusive and encompasses various modes of depiction of the mark, including shape of goods, packaging, and combination of colours.
In the case of Levi Strauss and Co. V. Imperial Online Services Private Limited & Others[6], the Hon’ble Delhi High court held that the “Arcuate Stitching Design” mark has been in use for a span of 150 years by Levis on its pants, trousers, jeans and other garments, and hence the impugned mark
is considered as a well-known mark and will be taken as indicating a connection between those goods and the Plaintiff.
Conclusion:
Determining the uniqueness of a position mark is one of the main obstacles to its registration in India. Position marks require extensive and consistent use to become unique; by their very nature, they are not immediately regarded as trademarks. The proprietors must present convincing proof that consumers identify their brand exclusively with the precise location of the mark on a product, which frequently calls for in-depth market research and usage of spanning years.
In the future, it will undoubtedly be necessary to create more thorough regulations and possibly modify the current legal system in order to properly handle unconventional trademarks like position mark.
In order to bolster their applications, companies looking to protect their position mark should also invest in thorough documentation and proof of their mark’s use and recognition in the marketplace. Therefore, the protection of position marks in India may be greatly improved with focused reforms and raised awareness, which will benefit both consumers and companies. As consumer markets continue to evolve, we can expect to see more brands seeking to protect the unique placement of their trademarks as a way to stand out and reinforce their brand image.
Gautmi Goel ,Intern at S.S. Rana & Co. has assisted in the research of this Article.
[1]https://guidelines.euipo.europa.eu/1803468/1789198/trade-mark-guidelines/12———–11-position-marks
[2]https://guidelines.euipo.europa.eu/1803468/1788824/trade-mark-guidelines/9-4———–9-3-4-position-marks
[3]C-163/16, June 12, 2018
[5]https://www.wipo.int/sct/en/comments/pdf/sct17/us_2.pdf
[6]{CS (COMM) 657/2021}