The General Court has confirmed two decisions of OHIM’s first Board of Appeal that two CTM applications for position marks made by Margarete Steiff were devoid of distinctive character. Both marks were refused registration by the examiner and OHIM’s Board of Appeal on the basis that they were devoid of distinctive character, and could not act as an indication to the average consumer, deemed to be the general public, of a particular commercial origin. Steiff appealed against both decisions to the General Court. However, the General Court confirmed the decisions to refuse registration of the marks.
This decision reinforces the difficulty of registering more unusual marks, and the high threshold that must be fulfilled for a three dimensional, or other, more unusual mark, to be capable of fulfilling the requirement that a trade mark must clearly act as an indication of origin to the average consumer. In particular, it is clear that the goods or services to which a mark is applied is of paramount importance when determining its distinctiveness. However, this decision is unlikely to be the end of the position mark as numerous position marks have made it successfully into the CTM register. And for Steiff it will be reassuring that the German Patent and Trade Mark Office, and a significant number of national offices in other countries which Steiff has designated in two international registrations, have registered Steiff’s position marks on the basis of inherent distinctiveness. It will be interesting to see whether Steiff will submit an appeal to the Court of Justice.