Know where to place your logo

Understanding Positional Trademarks

Positional trademarks are trademarks that are placed in a specific location on a product or affixed to a product to distinguish it from other products on the market.

Unlike traditional trademarks, which may include logos or words, positional trademarks focus on the placement of a mark such as a symbol, design or logo on a product. Think of the three stripes on an Adidas sneaker, the red label on the pocket of a Levi’s jeans, or the red sole of a Louboutin shoe. The placement of these marks is not only unique, but also integral to the brand’s identity.

When you put on the iconic Dr Martens boots, not only are the sturdy leather and cushioned soles eye-catching, but also the distinctive yellow stitching, a small but significant feature that has become synonymous with the brand. This unique layout is a classic example of positional branding.

Strict registration path

It is worth noting that when registering a position trademark, the position of the trademark and its size or proportion relative to the goods used must be clearly stated.

Like other trademarks, a position mark should meet basic requirements, namely that it should be distinctive and indicate the origin of the goods. In other words, the mark should be significantly different from the custom or usage in a particular industry.

Therefore, positional trademarks are not easily registrable because, in the absence of other elements, consumers will not generally infer the origin of the goods from the shape or position of the mark.

In South Africa, position marks must be distinctive and non-functional to be eligible for registration. The Companies and Intellectual Property Commission (CIPC) oversees the registration process, which includes filing an application, examination for distinctiveness, publication of oppositions, and ultimately registration if no opposition is filed.

Notable Case Studies

The case law provides valuable insights for businesses seeking to protect elements of their brand and highlights the importance of tactical planning in trademark applications:

adidas and Pep Store

background: Global sportswear manufacturer adidas owns trademark registrations for its famous three stripes covering: Among othersfootwear.
• Case details: Adidas filed a trademark infringement and passing off lawsuit against Pepkor Retail Ltd for selling sports and football shoes with two- and four-stripe designs, claiming that its trademark is confusingly similar to the three-stripe trademark.
• ruling: In terms of trademark infringement, the court ruled in 2013 that Pepkor’s four-stripe sneakers were confusingly similar to Adidas’ three-stripe trademark. However, the two-stripe trademark was considered sufficiently different that consumers were unlikely to be confused, so shoes bearing that trademark did not infringe Adidas’ trademark.

  When considering passing off, the courts consider the overall “appearance” of the product to determine if there is a likelihood of confusion. In this case, the court found that the double-stripe shoes clearly matched a brand name other than Adidas, and the stripes in the rest of the appearance were not sufficiently similar to Adidas shoes to constitute passing off.

  Given the distinctiveness of the adidas three-stripe mark, the markets and consumers for the respective products (and their overlap), and the similarities between Pepkor’s shoes and adidas’ shoes, adidas succeeded in its passing off claim regarding the four-stripe shoes.

• meaning: The judgment touched upon various aspects of trademark infringement and passing off, particularly those relating to well-known marks. The Court stressed the importance of trademark distinctiveness in such cases, and the impact of a trademark’s substantial goodwill and reputation in enhancing its distinctiveness.

Noyo Pianya Co., Ltd.

• background: Loro Piana is an Italian company specializing in clothing and textiles that claims to be the world’s largest cashmere manufacturer. The company was founded in 1924 and is owned by the French multinational holding group LVMH.
• Case details: The applicant in this case (Loro Piana SpA) sought to obtain registration for a position mark consisting of a knotted strap, a ribbon and a metal pendant in the shape of a padlock and a ring nut applied to the upper part of a shoe; for footwear in class 25.
• ruling: The European Union Intellectual Property Office (EUIPO) rejected the application under Article 7(1)(b) on the grounds that the mark lacked distinctiveness. The EUIPO stated that it was necessary to consider whether the mark was valued for its decorative value and that a mark would only be considered distinctive and registrable if it deviated significantly from the norms or usages of the trade, thereby indicating its origin.

  Therefore, the Office rejected the application on the grounds that the mark did not provide concrete evidence of inherent distinctiveness and that the mark in question consisted of decorative and non-distinctive elements that consumers could not associate with the origin of the goods.

• meaning: The ruling noted the requirements of distinctiveness and consumer perception.

Dr Martens yellow stitching

• background: The iconic yellow stitching on Dr Martens boots has long been a hallmark of the brand. Recognizable around the world, this stitching is not only a decorative feature but also an important aspect of the brand’s identity.
• Case details: In a landmark ruling, the District Court of The Hague ruled that the yellow stitching on Dr Martens boots constitutes a valid position mark. The defendant in the case was a shoe store called Van Haren, which produced similar lace-up boots with similar yellow stitching.
• ruling: The court highlighted the distinctiveness of the yellow stitching and stressed that the public generally recognises it as a distinctive feature of Dr Martens boots. The decision emphasised that such distinctiveness is essential to maintaining the validity of a position mark.
• meaning: This ruling highlights the importance of unique and identifiable characteristics in obtaining trademark protection. For Dr Martens, this ruling not only protects their brand identity, but also sets a precedent for other companies seeking to protect similar unique characteristics.

Vans v. Paredes

• background: Vans Inc., a major player in the athletic shoe market, faces competition from a company called Paredes, which is trying to register a location trademark for footwear that closely resembles Vans’ own designs.
• Case details: Vans argued that Paredes’s trademark was too similar to its own and could cause confusion among consumers. The dispute focused on the specific placement and appearance of the trademark on the shoe.
• ruling: The court ultimately supported Paredes’s claim and ruled that the mark could be registered. The decision was based on the principle that trademark evaluation must focus on the registration status of the mark, rather than its potential use or different presentation angles.
• meaning: This case highlights the importance of clear and unique positioning in trademark applications. It reminds companies that they must ensure that their trademarks are identifiable as applied and registered trademarks in order to effectively protect and maintain their trademark rights.

“I love” logo on T-shirt

• background: The “I Love” logo is a popular design element that often appears on a variety of goods, including T-shirts. The applicant wishes to register this logo as a mark on the left chest of a T-shirt.
• Case details: The EUIPO examiner rejected the application, finding that the “I love” logo was just an advertising slogan without distinctiveness. The applicant argued that placing the logo on the chest would make it distinctive.
• ruling: The EUIPO confirmed the examiner’s previous decision that the sign lacked the distinctiveness required for a position trademark, on the grounds that the sign was a simple and widely used advertising message and its positioning did not give it the necessary distinctiveness.
• meaning: The ruling illustrates the challenges of registering common slogans or advertising messages as position marks.

It is clear from case law that a position trademark is more than just a legal formality; it is a testament to a brand’s originality and foresight.

Requirements for obtaining a position trademark registration

The key points of applying for registration of a position trademark include:

• unique: A trademark must be distinctive or acquire distinctiveness through use. A common phrase or symbol is unlikely to meet this standard unless it is used in a highly distinctive manner.
• Public Perception: A trademark must be recognizable to the relevant public as indicating the origin of the goods. Simply placing a trademark in a particular place on a product does not necessarily confer distinctiveness on it.
• Function: A trademark should not have a functional purpose that affects the use of a product.
• Use consistency: To improve the chances of registration, the applicant must demonstrate that the location mark has been used consistently in the marketplace and has become associated with its brand over time.

Location markers and African landscape

While practices may vary across African IP registries, the principles of distinctiveness and public perception are universally applicable. Businesses seeking to obtain trademark status in Africa should ensure that their trademark is not only unique but also recognised by consumers as a signature of their brand.

in conclusion

While protecting positional trademarks can be challenging, in a world where details matter, ensuring a mark’s unique placement can be the key to integration and standing out in the marketplace. Brand owners who recognize and capitalize on this potential can not only protect their products, but also solidify their position as an innovation leader in the market.

As the digital age progresses, non-traditional trademarks will become increasingly important. We encourage brand owners to explore positioning trademarks as part of their comprehensive IP strategy to ensure that their unique product features are not imitated.