Positional trademark is a type of mark where its placement on a product plays a key role. That is, the decisive role in the registration of oppositional trademarks is played by their specific position or method of application on a product in an unchanged form, color, size, which makes the signs unique, and their registration, as in the case of traditional trademarks, allows owners to prohibit third parties from using the mark without permission.
However, difficulties arise due to the lack of special criteria in the law for the distinctiveness of positional marks. Nevertheless, certain requirements for their design have now been developed. Thus, a mark can be recognized as positional and will be registered with the patent office if its location on the product actually has distinctiveness and the mark is not functional or generally accepted for this category of goods, despite its unique location on the product.
Positional trademarks can be used:
- on clothing (on a certain place on a T-shirt, jacket or jeans, different from the standard location or on shoes, for example, the red sole of Christian Louboutin shoes);
- on the packaging of goods, which distinguishes them from other products on the market;
- on jewelry or haberdashery goods;
- on certain parts of technical devices, vehicles, etc.
Position marks are more often used in the fashion or design industries, where its placement or application is an important distinguishing feature of the brand.
An example of this are positional trademarks such as:
- the red sole of Christian Louboutin shoes, which buyers immediately associate with the Louboutin brand, or Levi's jeans, the red tab on the back pocket of which also serves as a positional trademark of the company;
- Moncler down jackets and other outerwear of this brand are not far behind in popularity, buyers of which are guided by a recognizable icon in the form of a logo located on the sleeve, and some models of Rolex watches have become recognizable thanks to the crown logo on the gear holding the glass;
- Adidas is no less famous for its positional trademark, which represents three stripes on the side surface of shoes or clothing.
The above examples show that such positional trademarks can serve as an effective means of increasing brand awareness and are not for decoration, but are a key element through which the consumer can recognize the manufacturer.
That is, positional marks have distinctiveness if their location on a certain part of the product causes associations in the consumer with a specific manufacturer.
When submitting an application to Rospatent, it is necessary to accurately describe the proportions of the mark relative to the boundaries of the product, which must be depicted in schematic form. It should be remembered that a schematic image of a product is not subject to legal protection and in the event of a legal dispute, its image, for example, in a different color, will not be the basis for recognizing the disputed positional trademark as different from the already registered one.
In addition to being unique, original, identifying the company's products or services, and easily perceived by consumers, such marks must be easily distinguishable across a variety of media and not mislead consumers as to the origin of the goods or services, or contain inappropriate or offensive elements. Thus, when developing a positional trademark, it is important to take into account the associations that the mark may evoke among consumers, and how this relates to the company’s brand values and the cultural traditions of the countries where it is registered.
A problem for the successful use of a mark may also be the content of a large number of small and complex elements, which will make it difficult to recognize on small surfaces of goods, as well as difficulties in adapting to changing market conditions due to its specificity.
Thus, the development and use of positional trademarks requires a careful approach and consideration of various factors when designers, marketers and many other company specialists work together. And to be sure that the mark complies with all legal requirements, it is important to involve patent attorneys in working on them. It must be remembered that positional trademarks, just like regular ones, serve as a tool for legal protection against counterfeiting and/or unfair competition. Therefore, it is important to take into account all their features at the initial stages of development.
