Swiss Court Shines a Light on Positional Trade Mark Criteria

German company Zweibrüder Optoelectrics has been refused trade mark protection in Switzerland following its application covering the size and positioning of holes in the end of a lamp.

Zweibrüder is a world leading manufacturer of LED torches and lamps, selling its lamps under the brand LED LENSER.  It has worldwide trade mark protection for the word mark LED LENSER and for the shape of its torches.

International Application

The recent application was filed as an International Trade Mark covering 22 countries.  So far, the mark has been granted in Germany, Kenya and Ukraine.  Most countries designated in the application have refused the application.

The application was filed as a 'positional' mark which is a non-traditional type of trade mark where the arrangement of the position of the sign on the goods must be determined in the application.  The application included a drawing of the lamp with the following description, "Protection is desired for 12 bores in the protective layer in the lamp head of a respective torch lamp or mainly cylindrical lamp, in particular of a pocket lamp; other forms or shapes in the reproduction do not belong to the application of the mark."

Swiss Trade Mark Office Refusal

The basic principles for the grant of trade mark protection in Switzerland are set out in the Federal Act on the Protection of Trade Marks and Geographical Indication 1992 (Act).   The Act does not exclude position marks like this one, however, positional marks cannot be registered if their features are merely of an aesthetic nature or determined by technical necessity.

Having considered the application the Swiss Trade Mark Office refused to grant the mark.

Appeal Dismissed

Zweibruder appealed the decision to the Federal Administrative Court which also rejected the application for the mark.

The Federal Administrative Court held that the holes were not functional.  However, it found that the holes were aesthetic and merely decorative and not distinctive.  Internet research showed that it was common for flashlights to have a decorative or functional element around the rim and that the general public would not perceive the holes as an indication of origin.

Recent case law suggests that a positional mark will need to be very unusual to be considered distinctive.  The decision follows a recent decision of the Federal Administrative Court to refuse a positional mark applied for by Louboutin for the colour red applied to the soles of high heeled shoes.