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Non-Traditional Pharmaceutical Trade Marks – Position Marks
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Volume 53, Issue 3

Non-Traditional Pharmaceutical Trade Marks – Position Marks

By Rebecca Anderson-Smith, Mewburn Ellis LLP
When bringing new products to market, most pharmaceutical brand owners will consider whether there are additional word or logo trade marks they should protect in addition the name of the product.
But these are not the only aspects of branding which might warrant protection. Other, less traditional types of trade marks, can often be overlooked but are a vital element of your brand protection strategy.
Non-traditional trade marks typically include any type of trade mark beyond a word mark, logo mark, or logo containing words.
In the UK and EU, it is possible to protect shapes, colours, sounds, motion marks, position marks, holograms and pattern marks. Here, we examine position marks, which refer to the specific way in which a sign is placed on or affixed to goods.
Can position marks be registered?
When applying to register a position mark, the representation needs to clearly define the position of the mark and its size or proportion with respect to the relevant goods. An example of this is STADA Arzneimittel AG’s EUTM Registration No. 018172864 for packaging which shows the position of a pink corner design and their STADA logo. These elements are used consistently across a number of their products.
EUTM Registration No. 018172864
Image from stada.com
Meanwhile Gilead Sciences owns three EUTM registrations for position marks corresponding to the placement and colour of elements on a bottle. EUTM Registration No. 018285553, for example, includes the description “The mark consists of the colors red and gray as applied to the top cap used as packaging for the goods and the placement of a design of a shield and leaf, both shaded in black and white, to the left of the word "GILEAD" in gray. The matter shown in broken or dotted lines is not part of the mark and serves only to show the position or placement of the mark”. The registration covers “Pharmaceutical preparations; antiviral pharmaceutical preparations; pharmaceutical preparations for treatment of coronavirus”.
EUTM Registration No. 018285553
EUTM Registration No. 018310852
EUTM Registration No. 018310855
What are the challenges?
To be accepted for registration as a trade mark in the UK and EU, a position mark must comply with the criteria established by the Court of Justice of the European Union in  Sieckmann. It must be clear, precise, self-contained, easily accessible, intelligible, durable and objective. In addition, the shape must be distinctive enough to function as a badge of origin. A position mark is unlikely to be viewed as distinctive if the key elements of the mark appear to be merely decorative. By way of example, in January 2020, when Italian company ALFASIGMA S.p.A. applied to register a position mark in respect of pharmaceutical products under EUTM Application No. 018178498, the application was rejected on the grounds that the mark is not immediately able convey information to the consumer about the origin of the products. Instead, the EUIPO said that consumers may think that the configuration of the striped design on a box simply constitutes a new aesthetic motif adopted by the owner for its products.
EUTM Application No. 018178498
Meanwhile, whilst STADA Arzneimittel has been able to register a position mark comprised of their pink corner design with the STADA logo (as shown above), separate applications for a position mark consisting solely of the pink corner design have received objections in a number of EU countries and in the UK on the grounds that the mark is not distinctive. An appeal is currently pending at the EUIPO.
EUTM Application No. 018131247
Gathering and filing evidence of extensive use and arguing that consumers have come to see the position mark as a trade mark through use may enable you to overcome an objection like this, but it can be a laborious and costly exercise. Furthermore, if the application is an EUTM application, you will need evidence from across the whole of the EU. This can be difficult for many companies who will have only sold their product in certain specific countries.
Can they be enforced?
There are few examples of registrations for position marks being used to prevent use and registration of other marks in the pharma field. However, we can look at the principles established in other sectors, including footwear where position marks are seemingly more common. In 2018, the General Court of the European Union issued a decision in  Case T629/16 Shoe Branding Europe BVBA v EUIPO – adidas AG  confirming a previous decision of the EUIPO Board of Appeal in which they rejected an application to register a position mark consisting of two parallel lines on a shoe (EUTM Application No. 8398141) on the grounds it would take unfair advantage of the reputation of Adidas’ EUTM Registration No. 3517646 for a figurative mark consisting of three parallel stripes on a shoe.
EUTM Application No. 8398141
EUTM Registration No. 3517646
An individual, Fernando Ruz Gutierrez, has also successfully enforced his EUTM Registration No. 017473621 for a footwear position mark against part of both EUTM Registration Nos. 017837014 and 017883036.
EUTM Registration No. 017473621
EUTM Registration No. 017837014
EUTM Registration No. 017837014
These decisions demonstrate that position marks can be considered similar to other types of marks, both where the overall presentation is very similar (as in the Adidas case) and where the later marks are similar designs in the abstract. It is worth noting that in these cases the later marks and the earlier marks were all in the same sector, namely footwear. Position marks might be more difficult to enforce against trade marks which cover less similar goods, although the legal tests are the same.
Pharmaceutical brands cannot afford to ignore the importance of non-traditional trade marks. Shape, colour and position marks in particular are increasingly adding significant value to a brand. In some cases, consumers are coming to see those elements as indicating brand origin, a role that in the past was often performed solely by the brand name and logo.
Whilst sound, multimedia and motion marks have historically been difficult to register, improvements in technology have made this a more straightforward process, so another area of non-traditional trade marks that brand owners should consider.
The more iconic these elements of your brand become, the more likely they are to be copied, making protection of non-traditional trade marks all the more vital. How different trade marks interact and how this influences consumer perceptions must be considered as part of an overall brand protection strategy.
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