CA-2025-000162 - [2025] EWCA Civ 1340

It is common ground that the Trade Marks are all “position marks”. There is no applicable legislative definition of a position mark. According to Article 3(3)(d) of Commission Implementing Regulation 2018/626/EU of 5 March 2018 laying down detailed rules for implementing certain provisions of European Parliament and Council Regulation 2017/1001/EU on the European Union trade mark, a position mark is “a trade mark consisting of the specific way in which the mark is placed or affixed on to the goods”. This definition is problematic, for two reasons, First, it is circular because of the use of the words “the mark”. Secondly, even if one replaced the words “the mark” with the words “the sign”, the definition would apply regardless of what the sign consisted of. Counsel for adidas and counsel for TB agreed that a position mark is better understood as referring to the combination of a visual element (which may include its colour) and its position on the goods. A common example of a position mark is the red tab positioned near the top left corner of the right-hand rear pocket of a pair of Levi’s jeans. The significance of position marks is that their distinctive character derives at least in part from their positioning.