Community trademark: the General Court specifies the notion of distinctive character for "posit

In 2010, German company, Steiff, manufacturer of plush toys, asked the Office for Harmonization in the Internal Market (OHMI) for the registration of the following two “positional” marks:

- attachment of a round metal button, shiny or mat, fixed to the middle of the ear of a plush toy; and

- attachment of a fabric label in an elongated rectangular shape with a round metal button, shiny or mat, to the middle of the ear of a plush toy.

OHMI refused to register the “positional” marks submitted by Steiff, holding that they were devoid of distinctive character, within the meaning of article 7 paragraph 1 subsection b of Council Regulation (EC) nº207/2009 of 26 February 2009 on the Community trade mark.

Trademarks known as “positional” marks are a type of new trademarks. These trademarks are defined by the particular position of their attachment.

A red label sticking out from the right-back pocket of a pair of jeans, for instance, is a “positional” mark.

In this case, Steiff challenged, before the General Court, OHIM’s decisions refusing registration.

On the 16th of January 2014, the General Court dismissed Steiff’s actions for annulment (Margarete Steiff GmbH/OHMI, T-433/12 et T-434/12).

The General Court held that the distinctive character of the trademarks was not established.

The General Court argued that the buttons and labels:

- created a common combination, that could be perceived by consumers as either a decorative or a functional element;

- could be confused with the appearance of the plush toy;

- are usual elements of the configuration of a plush toy;

- do not enable the consumer to identify the indication of commercial origin.