Red flags and red lines – Important, but not protectable as position marks

Position marks are an intriguing type of sign because they do not only consist of the sign itself but also its particular placement on the product (Art. 3(3)(d) EUTMIR). Two recent decisions from the General Court (here and here) deal with the question of distinctiveness of rather simple types of such signs.

Background

The first decision concerns the application of the company Doorinn for the following EU trade mark:

The mark was filed for ‘mattresses for medical purposes’ in class 10 and ‘mattresses’ in class 20. Doorinn described the sign as follows (my own translation):

“The mark consists of a red flag which is attached to the bottom of the mattress on one of the vertical edges in the lower third.”

The examiner of the European Union Intellectual Property Office (‘EUIPO’) rejected the application because it lacked distinctiveness (Art. 7(1)(b) EUTMR). The appeal to the EUIPO’s Board of Appeal (‘BoA’) was unsuccessful. Doorinn appealed further to the General Court.

In the second case, VistaJet filed for registration of the following EU trade mark for various air transport services in class 39:

The sign was described as follows:

“The mark consists of a horizontal red stripe on a silver fuselage. The [stripe] runs from the nose to the tail of an airplane through the middle of the fuselage, above the wings. The gradient aspect of the fuselage is intended to represent a silver, reflective surface. The matter represented by dotted lines is not part of the mark and serves only to show the position of the mark.”

The EUIPO’s examiner rejected the application for lacking distinctive character. The BoA dismissed VistaJet’s appeal. VistaJet filed an action with the General Court.

The General Court's Decisions

The General Court dismissed both appeals (T-147/24 and T-195/24).

The judges recalled that the perception of a trade mark by the relevant consumers can be influenced by the type of mark. Consumers are not in the habit of drawing conclusions about the commercial origin of goods based on their appearance. Therefore, trade marks that represent the appearance of the goods can only be considered inherently distinctive if they deviate significantly from the norms or customs in the relevant sector.

This case law does not only apply to figurative and 3D trade marks but to all signs that are indissociable from the appearance of the product.

The Court also reminded that colours and colour combinations are distinctive in exceptional circumstances only. They are also indissociable from the product and are generally not used as source indicators but because of their appeal and in order to advertise and market goods and services without any specific message.

1. Doorinn’s red flag

The Court held that the subject of the protection claimed is not the red flag as such but the attachment of this flag to a specific part of the goods. Due to the characteristics of position marks, the sign would not exist without the fixed connection of the flag to the precisely defined place on the goods. Therefore, the case law mentioned above also applies to position marks.

Consequently, the decisive question was whether the sign departed significantly from the norms or customs in the relevant sector. In this respect, it is not necessary for the EUIPO or the BoA to establish that a sign is customary in order to deny the distinctive character.

The judges upheld the BoA’s finding that the red colour and the positioning of the flag were the decisive and central elements of the sign. The rectangular and looped shape, the positioning of the flag in relation to the goods and the flag’s small size, remained secondary in the eyes of the relevant public.

The rectangular shape of the flag was considered to be a basic geometric shape, which is non-distinctive. The loop is typical of labels. Pictures submitted by the Doorinn showed small rectangular labels forming a loop and standing out from the rest of the product. They even depict small, red-coloured labels affixed to one of the edges of a mattress. This confirmed the BoA’s finding of non-distinctiveness.

The colour red was deemed to be a basic colour lacking inherent distinctiveness.

The Court held that the BoA was also entitled to rely on the use of flags in the fabrics sector in general and not just on mattresses. Consumers of a particular product may be influenced by marketing for other products which they also consume. The judges considered that consumers interested in mattresses may look for other fabric products, such as clothing, upholstery, seat cushions or sheets. Similar flags are used on these goods.

For these reasons, the judges confirmed that Doorinn’s application had been rightly refused protection.

2. VistaJet’s red line

With respect to VistaJet's trade mark, the Court recalled that signs that are excessively simple and constitute basic geometrical figures, such as circles, lines, rectangles or pentagons, are not perceived as trade marks, unless they have acquired distinctive character through use. A sign must have certain characteristics, which may be easily and instantly memorised and which make it possible for the sign to be perceived immediately as an indication of the commercial origin.

The judges found that the red line is a basic geometrical figure and that the colour red is highly visible, striking and used primarily for decorative purposes or to attract attention. The colour silver on the aircraft does not particularly stand out from the colour white, which is traditionally used in the aviation sector. The Court concluded that the mark is excessively simple and non-distinctive. The red line affixed to a silver aircraft has merely a decorative purpose.

VistaJet’s argument that the high level of attention of the relevant public had an impact on the distinctive character was rejected. The fact that the relevant public is specialized does not have a decisive influence on the legal criteria for assessing the distinctive character of a sign. A higher level of attention does not lower the threshold for finding distinctiveness.

Comment

The decisions provide a good summary of basic principles of distinctiveness. Basic geometric forms and colours lack inherent distinctiveness. The same applies to the shape of goods or parts thereof, unless the shape deviates significantly from the norms or customs in the relevant sector. The level of attention of the relevant public does not play a role in the assessment of the distinctive character of a sign. It may only be relevant in assessing relative grounds for refusal.