Non-Traditional Pharmaceutical Trade Marks – Position Marks

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”.

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.

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.

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.

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.

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.

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.