Position marks

Position marks
Representation in the trademark register
Positioning on different goods
Distinctiveness
Relationship to other types of trademarks
Examples of position marks
Other types of trademarks
Costs of a position mark

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Position Marks

The position mark is a type of trademark that claims a consistent positioning on the marked goods. Registering a position mark is significantly more challenging than registering other types of trademarks.

The position mark consists of two components:

a sign such as a word, image, or color
the positioning of the sign at the same location, in the same form and size or, in any case, size relation on the goods (or on a part of the goods) of the trademark owner. The positioning is therefore a fixed component of the position mark.

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Representation in the Trademark Register

The position mark is usually represented by a sketch showing all elements. The goods themselves are very often shown in dashed lines in the sketch to visually separate the goods and the positioned trademark. In many cases, a textual description is also mandatory.

The representation and description of the position mark must contain the following information:

the shape of the trademark
the location of the positioning
the size or size relation of the trademark

Positioning on Different Goods

If the position mark is used on different goods, this must be taken into account when designing the sketch and the description.

Distinctiveness

Like any other type of trademark, the position mark must have distinctive character. For assessing the distinctive character of position marks, no different assessment criteria should be used than for other trademark forms. Even the slightest distinctive character is sufficient for registering a trademark.

Even if the image elements of the position mark are not distinctive when considered in isolation, the distinctive character may result from the positioning at the same location in the same form and size on a product. The positioning must therefore be included in the assessment of the trademark’s distinctive character.

When assessing the distinctive character, it is crucial whether the positioned element has characteristic features.

This is the case if, from the perspective of the average consumer addressed by the respective goods, the positioned element does not merely have a technically functional function and goes beyond the usual designs of comparable goods, such as the red element in the heels of the men’s shoe brand “Llyod.”

There is no characteristic feature if the average consumer addressed perceives the positioned element only as pure decoration, such as a red seam around the back pockets of jeans.

In assessing the distinctive character of a position mark, the practice of the different trademark registers shows significant differences. The European Union Trademark Office generally only registers position marks with strong use. The registration practice of the national trademark offices, on the other hand, is much more liberal. This must be taken into account when choosing the right strategy.

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Relationship to other Types of Trademarks

In principle, the relationship between position marks and other types of trademarks is fluid. The ECJ ruled that a position mark (due to the graphic representation) is always also a figurative mark. Conversely, a figurative mark could also be a position mark. For most trademark law issues, not the chosen type of trademark, but only the perception of the trademark is relevant.

Nevertheless, if the sign to be positioned already has distinctive character on its own, it is advisable to first register it as a pure figurative mark. In this case, the position information would lead to an unnecessary restriction of the scope of protection and thus also of future possibilities of use.

A position mark as the only trademark is therefore particularly useful if the distinctive character only arises through the positioning. Conversely, the additional feature of the same positioning can give additional distinctive character to an already weakly distinctive trademark. In this case, the additional registration as a position mark would significantly improve the enforceability of the trademark.