On 2 May 2024, the First Civil Senate of the Federal Court of Justice (BGH) decided that the appeal on points of law against a decision of the Federal Patent Court (BPatG), according to which the position mark ‘Sohlenmuster’ (No. 30 2015 053 169) is to be cancelled, is dismissed.
The BPatG had previously cancelled the position mark due to a lack of distinctive character. The BPatG essentially stated that, according to the relevant standards for the distinctiveness of a sign that merges with the appearance of the labelled product, the mark only has distinctive character and an essential function of indicating origin if the sign deviated significantly from the standard or the customary industry practice of sole designs at the time of application or at the time of the decision.
This view is also shared by the BGH. In particular, the BGH states that the design at issue features lines that intersect and run parallel to each other in equal measure. This arrangement, which is always the same, results in a repetitive, similar graphic pattern and inclusions described by the trade mark proprietor as ‘bone-like’. It is true that these are pleasingly arranged patterns that are repeated in a recurring sequence and that the lines are particularly attractively organised. Beyond that, however, the surface design did not show any characteristic deviations or deviations that were significantly above the norm or customary in the industry. It was a variation of intersecting transverse lines, which was frequently found in other sole designs at the time of filing and which did not deviate significantly from the norm.
This decision shows once again that although trade mark law permits a large number of different types of trade marks, successfully obtaining and defending them is a complex undertaking. MSP has a great deal of experience in the area of different types of trademarks and has recently registered and defended a position trade mark. Our experts will be happy to answer any questions you may have.