Intellectual Property Enterprise Court

IP-2024-000037 - [2025] EWHC 547 (IPEC)

Fecha: 11-Mar-2025

Position marks

Position marks

35.

A position mark is defined in EU Trade Mark Implementing Regulation 2018/626 as ‘a trade mark consisting of the specific way in which the mark is placed or affixed in the goods’, see art.3(3)(d).

36.

In Thom Browne Inc v Adidas AG [2024] EWHC 2990 (Ch) the claimants sought to invalidate a portfolio of 16 position marks owned by the defendant, all in the form of three stripes. Joanna Smith J held that 8 of the marks were invalid and some others were partially invalid being given a revised specification.

37.

The judge identified one of the issues which arose in the case (the claimants are identified as ‘TB’ and the defendants as ‘adidas’):

‘[124] An important dispute between the parties at trial was the extent to which Sir John Mummery’s fourth point (Nestlé at [15(4)] dealing with ‘multitude of forms’) permits variations in the manifestations of the Mark. TB submits that a mark which consists of a multiplicity of signs is invalid and that variations within the sign can be permitted only if they are such as to “go unnoticed by a consumer” untainted by evidence of use or distinctive character. adidas submits, on the other hand, that [15(4)] of Nestlé cannot be understood to mean that a graphical representation which admits of any degree of variation is necessarily impermissible.’

38.

The judge reached the following conclusion:

‘[134] In light of the above analysis, it appears to me that in considering whether variations inherent in a trade mark are impermissible (and consistent with the principles articulated in Nestlé and in Glaxo), the court must consider:

whether the variations affect the ability of the mark to convey clear and precise information to the registrar, to economic competitors and to the relevant public, or in some other way cause the mark to fall foul of the identification requirements (which remain the overarching requirements);

and

whether the mark is capable of denoting origin to the relevant public so as to enable a consumer to repeat the experience of a purchase. This consideration (which appears to me to preclude variations which alter the subject matter of the registration in the eyes of the public or, put another way is concerned with the importance of the sign being perceived unambiguously if it is to fulfil its function as an indication of origin – see Glaxo at [36]) is probably best regarded as part of the assessment as to compliance with the identification requirements. Certainly I agree with TB that it is not a self-contained test for registrability and nor is it intended as a proxy for a test of acquired distinctiveness. Nonetheless, its relevance was identified in Heidelberger and acknowledged in Nestlé at [15(8)].

[135] Thus I consider that the mere fact that a mark includes a number of possible variations or permutations will not inevitably render it invalid. It may very well do so, but it is clear from the authorities to which I have referred that the issue must be determined having regard to the considerations set forth above and the specific facts of the case. The degree of precision required in any case (and thus the extent of the permissible variations) will depend on the nature of the mark itself. It is clear from the authorities to which I have referred that colour marks give rise to very specific and particular issues which may not arise in relation to other types of marks.

[136] Support for this conclusion may be found in Kerly’s Law of Trade Marks and Trade Names (seventeenth edition) which points out at 2-066 that a word mark, which is represented by the word in capitals in plain type, will cover the word in a wide range of typefaces because the representation is clear and precise (see also Sony Ericsson O-138-06 per Richard Arnold QC (as he then was) sitting as an Appointed Person at [23], where the judge also recognised the potential for a mark represented in monochrome with no colour claim or limit to “embrace reproductions of that device in a variety of colours”).’