The Swiss Court decides on a position trademark

In line with a recent Louboutin decision, the Swiss Court on 13 May 2016 decided on another purely decorative element filed as a position trademark. This time, German flashlights were in question, and the circular position of the holes on their rim.



Background of the case

Zweibrüder Optoelectronics GmbH is a German manufacturer of flashlights and headlights. They were of the opinion that the special positioning of holes on their “LED LENSER” flashlight line was unusual enough to be granted trademark protection. They successfully obtained protection in Germany (TM no. DE 30077125) and were looking to elevate the protection of their position trademark to an international level. However, when trying to register the trademark in Switzerland (TMA no: IR 776 691), they were rejected by the Swiss Intellectual Property Office, for reasons of technical necessity for the product and the lack of distinctiveness of the trademark. This led to a lawsuit on 17 April 2014, but the Administrative Court stated that the simple circular arrangement of eight holes is not enough to be the indication of origin, but an esthetic feature of the product. Still believing in their trademark, Zweibrüder appealed to the Swiss Federal Administrative Court.

Decision of the Court

The Swiss Federal Administrative Court rendered its decision on 13 May 2016 (case B-2894/2014). Zweibrüder claimed that the holes are unusual and distinctive for this product. They add no technical value to the good, and in fact, allow light to escape through the holes. They never claimed acquired distinctiveness. The Swiss Federal Court agreed on all of their claims, except for the crucial one: whether the holes gave distinctiveness or were there only there for decoration. The Court´s view on the protectability of position marks is on the narrower side of the scale. It is of the opinion that distinction can be gained by positioning an element of the trademark on an uncommon or unexpected place. However, if the element is a part of the product´s shape, it should be considered as a shape mark, and not a position one. Next, the court stated when there are multiple possibly differentiating elements, the weight shifts to the overall impression of the product. In this case, the holes are positioned in a simple circle and there is nothing indicating that the consumer would identify the product simply by looking at these elements. Therefore, the previous decisions are upheld.