The General Court earlier this week - in only 47 paragraphs - held in
Case T-433/12 that famous German toy manufacturer Steiff''s CTM' application for positional trade marks for their metal buttons affixed to plus toy ears lacks distinctive character and thus cannot be registered as a CTM. As Steiff is famous for bears, albeit not polar bears, this case has a certain resonance with this German Kat, who is potentially not completely impartial in this instance given she is the proud owner of a Steiff polar bear Knut.
What had happened? Steiff in 2010 applied for CTMs for a metal button, or more precisely for what would best be translated into a ‘positional’ mark (
Positionsmarke): a metal button to be affixed to the middle of the ear of a cuddly toy together with a rectangular fabric strip label. OHIM and its Board of Appeal refused registration of these mark based on a lack of distinctiveness arguing inter alia that button and fabric strip would not fulfil the essential function of a trade mark to indicate trade origin.
On Steiff's further appeal the General Court has now confirmed OHIM's decision stating that the signs applied do not meet the minimum level of distinctiveness required for registration as Community trade marks. The court found that the marks could not be separated from the toy or where one with the toy ("
verschmelzen" = "melting into one another", not sure how to translate this from German, this German Kat admits). Moreover, being positional marks, the buttons and label could not exist when separated from the toys, i.e. when not being affixed to the exact point of the toy's ear. The court stressed that the sign were inseparable from one of the aspects of the goods (toys) and also pointed out that button and fabric label were normal components of toys. The court added that consumers would regard the buttons together with the label as a decorative element or a functional one, but not as something exceptional. The court here made reference to a case relating to the the colour orange used on the toe end of a sock, which also did not function as a trade mark.
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| Steiff also makes cats ... |
To the consumer the particular combination/configuration of button and label (i.e. to the ear of the toy) would just be regarded as one possible permutation of decorating the toy or affixing the button and label to other parts of the toy . Accordingly the button affixed to the ear would not be regarded as an indicator of trade origin by consumers and the fact that Steiff was the only manufacturer affixing buttons to the ears of its toys was not relevant in this context. This German Kat is a trifle confused by the decision even though she can see some of the logic. It may all come down to nostalgia: the "
Knopf im Ohr" has always functioned as a trade mark for this German Kat, in the happy days of her childhood in a German provincial town before she even knew about the existence of trade marks as a legal concept. I will have to read this case again!
It's currently only available in German and French.
