Abstract
In relation to opinion to case C163/16, it is noticed that the qualification as a position mark as a term has no legal effect. In regard to this notice, it is apparent that a position mark also can consist as a part or as a component of a product. Therefore, the thesis seeks to delimit the absolute grounds of refusal regarding get-up of the product and position marks – more specifically distinctiveness, prohibitions in relation to art. 7(1)(e) and distinctiveness acquired through use. These will be used to enlighten the difference between the mark types.
Position marks and get-up of the product are different because position marks are also protecting a placement. Regarding a mark that it is part of the appearance on the external surface of the product itself, it is hard to see the real difference between mark types. Therefore, in most instances, the marks can be almost identical. In relation to both types of marks, it is apparent from caselaw that a mark which is dependent on the product that it designates will be difficult to assess in terms of distinctiveness. This is due to consumers not usually being used to understanding a mark from its form. Therefore, both marks have to deviate significantly from what is normal within the relevant sector. Regarding the overall assessment, the mark is the same although there are theoretical differences. EUIPO’s registrations indicate a less strict practice regarding both marks.
Regarding the prohibition of shapes or other characteristics, it is apparent that the nature of the goods in relation to get-up of the product will theoretically be applicable. It is less apparent whether the same applies to position marks. Regarding the technical result-criteria, it is clear from case law that the article will be assessed regardless of whether the sign of the product is of a two- or three-dimensional character. Case law states that the article by analogy will be applicable on get-up-of the product. Same will be theoretically applicable by analogy on a position mark. In relation to the assessment of substantial value criteria, it is clear that position marks of a featureless color will not accommodate use of the prohibition. There is, however, caselaw supporting application on get-up-elements regarding sewing. Distinctiveness through use is the same in regard to evidence as well as the assessment of the court. The evidence that is basic for both types of mark is sale figures, commercial cost and investment cost. It is a problem that this evidence rarely is able to support the commercial origin. In EUIPO, there are some registered positions mark, which could indicate a stricter standard for get-up-elements.