Position mark

A position mark is a trade mark consisting of the specific way in which an element, whether a shape, a pattern or a colour, is placed or affixed on a product, always in the same location and in constant proportions. The protected sign is neither the element itself nor the product, but their combination at a given location. The category is recognised by the implementing rules of Regulation (EU) 2017/1001 and accepted in French law on the basis of Article L. 711-1 of the French Intellectual Property Code, which opens the trade mark to any sign capable of clear and precise representation.

Representation of the position mark

The filing consists of a reproduction of the product on which the claimed element appears in solid lines, while the contours of the product itself are shown in dotted or broken lines to indicate that they form no part of the mark. A description may specify the position, the proportions and the nature of the element. This representation must make it possible to determine the subject matter of protection unambiguously, failing which the application is refused or the mark declared invalid. Classic examples are the tab or strip stitched at a precise point on a shoe, a sole of a given colour, a red button placed on a pocket or a piping located in a constant position on a garment.

Distinctive character

The position mark faces the same difficulty as the three-dimensional mark or the colour mark, namely that the public first perceives the affixed element as an ornament or a feature of the product, and not as an indication of origin. Distinctive character is accepted where the element, in that location, departs significantly from the customs of the sector, or where it has acquired through use the capacity to identify the undertaking. The offices examine closely whether the claimed location is a usual one for a decoration or a label, in which case the sign merges with the appearance of the product. Distinctiveness acquired through use is in practice the main route for position marks known to the general public.

Scope and limits of the right

The position mark makes it possible to oppose the affixing, in the same location, of an identical or similar element on identical or similar goods, where this gives rise to a likelihood of confusion. It does not prohibit the use of the same element in another location, nor the use of another element in the same location, save where a trade mark with a reputation is infringed. The exclusions relating to functional shapes or shapes giving the product its substantial value apply to the claimed element, and the owner must, in litigation, demonstrate genuine use of the sign precisely in the position filed.

Key points

The position mark protects an element affixed at a constant location on the product and must be represented so as to isolate clearly what is claimed. Its validity rests on the perception of that element, in that location, as an indication of origin, most often acquired through intensive use. Show the product in dotted lines, describe the position precisely and gather from the outset the evidence that the public recognises the sign.

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This glossary entry is general in scope and does not constitute legal advice.

Dhenne Avocats is a patent litigation firm. Matters outside that field, such as trade marks, designs, copyright and IT contracts, are handled by practitioners the firm works with regularly, and by the firm itself when they arise in a patent dispute.

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