EU General Court Rejects Application For “Position” Mark For a Button On The Ear of a Soft Toy
In Cases T-433/12 and T-434/12, Margarete Steiff GmbH v OHIM, the EU General Court confirmed that Steiff is not entitled to Community trade marks (CTMs) to protect the attachment of a button, or a label attached by means of a button, to the ear of a soft toy, because the attachment lacks distinctive character.
In October 2010, Steiff filed two CTM applications to protect the position of the attachment of a button or a label attached by means of a button to the ear of a soft toy in respect of “hard and soft toy animals made of felt, fur, alpaca wool, mohair, polyester which have ears” in Class 28.
In June 2011, the Office of Harmonization for the Internal Market (OHIM) rejected both applications, finding that the marks lacked distinctive character under Article 7(1)(b) of CTM Regulation (207/2009/EC). OHIM’s Board of Appeal upheld the decisions and Steiff appealed to the General Court.
The General Court stressed that the perception of the public would be influenced by the nature of the sign, rather than the goods for which registration was sought. The average consumer was generally not in the habit of identifying commercial origin on the basis of the appearance of goods, unless they differed significantly from the norm or customary practice.
The General Court considered whether or not the marks applied for merged with the appearance of the identified goods. The applications did not seek protection for the concrete visual representations of the marks, which were merely provided as an example, nor did they seek protection for the glossy or matt round metal button. Protection was sought only for the attachment of the button to a particular part of the goods concerned. In the General Court’s view, the marks, as position marks, were inseparable from the soft toys themselves since, without the fixation of the button and the label at a precise point, they did not exist.
The General Court noted that buttons and small labels are common design elements for soft toys and that consumers are used to a great diversity in those products, their designs and possible configurations. The attachment of such components to the ear, which is a common combination, would be perceived by consumers as a mere decorative element, or even a functional one in the case of the mark applied for, which also consisted of the label. The marks did not, therefore, differ significantly from the norm and were incapable of indicating commercial origin.
The General Court also found that the mere fact that Steiff is the only manufacturer to attach a shiny or matt 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 is irrelevant. Nor did it make a difference that the descriptions of the marks referred to a shiny or matt round metal button, since the choice of materials was irrelevant in assessing distinctive character and would merely be perceived as a decorative element.
The case confirms that it is an uphill struggle to obtain trade mark protection for non-traditional trade marks. The mere fact that Steiff is the only manufacturer to attach a shiny or matt 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 was irrelevant for assessing distinctive character. This suggests that even where an undertaking has been the only undertaking using a particular mark for a long period of time (in this case over 100 years), this may not be sufficient to support an argument of acquired distinctiveness through use. A non-traditional trade mark would need to differ drastically from the norms and customs in the relevant field in order to qualify for registered trade mark protection.