The General Court of the European Union has set a high watermark for positional trademarks in refusing protection of the “Steiff – Knopf im Ohr” (button in ear). The General Court has dismissed an appeal of the luxury teddy bears’ maker Margarete Steiff GmbH (Steiff) who applied for a positional community trademark described as “a shiny or mat round metal button positioned in the middle part of an ear of a soft toy.” Steiff, founded in 1880, introduced the famous metal “button in ear” in 1904 to keep counterfeits from being passed off as authentic Steiff toys. The button is still used for that purpose today.

Steiff’s positional mark rejected

In its application to the Community trademark office (OHIM) in 2010, Steiff sought to register a “positional” mark for the attachment of a metal button (shiny or mat), as well as for the attachment of a rectangular fabric label with such a button, to the middle of the ear of a soft toy. Community trademark Application No. 9 439 613. The actual mark is not an image or the actual button, but the position of the button or label in the ear of the stuffed toy. Both the examiner and the OHIM appeal board refused to grant registration of the mark, on the basis that it lacked distinctiveness. Steiff appealed to the General Court. The General Court dismissed the appeal, confirming OHIM’s decision that the mark applied for did not have the minimum level of distinctiveness required under Article 7(1)(b) of the Community Trade Mark Regulations, failing in its essential function to denote trade origin. See 16 January 2014 EU General Court Press Release. The General Court gave the following reasons:

• Where a mark comprises the appearance of the goods it is unlikely to indicate trade origin to the average consumer, unless the mark itself is exceptional from the standard or norm used in the industry.
• The General Court found that the applied for mark merges with the goods, i.e., the soft toys. This was unavoidable in the present application as the mark could not exist without it being fastened to the soft toy.
• The Court went on to consider whether the mark is exceptional from the norm or standard used in the industry. The Court found that it was not. It held that the use of buttons on soft toys for decorative purposes is very common. Any differences to what is customary in the industry was not sufficient to give the mark a minimum level of distinctiveness. In the Court’s opinion, the average consumer would view the button as decorative or an original design, but not as an indication of origin.

See Judgment (German version; French version).

Commentary

This decision sets a very high standard for positional trademarks in Europe. Although globally renowned for the last century for its soft toys with shiny or mat metal buttons fastened to their ears, Steiff was unable to persuade the Court that neither originality and novelty are significant criteria when determining whether a mark should be granted. Perhaps Steiff can be consoled with the words of Teddy Roosevelt, for whom Margarete Steiff named the famous teddy bear,

“It is always better to be an original than an imitation.”

Authored by Inga-Marlene Pietsch (inga.pietsch@nortonrosefulbright.com / +44 20 7444 2468) of Norton Rose Fulbright’s Intellectual property team in London and Hazel Sharp (hazel.sharp@nortonrosefulbright.com / +44 20 7444 2962) of Norton Rose Fulbright’s London office.