The EUIPO's recent decision on Loro Piana's position mark

Last April, the EUIPO rejected a European so called "position" trade mark application by Loro Piana on the basis of Article 7(1)(b) RMUE, according to which the registration of trade marks without distinctive character is prohibited.

A "position" mark refers to a distinctive sign consisting of a word, a graphic motif or a three-dimensional figure applied to the surface of a product.

Specifically, the trade mark application by the well-known Italian fashion company, filed on 30 June 2023, consists of a combination of a band, a knot and ribbons, with two metal pendants attached, one in the shape of a padlock, the other in the shape of a ring nut, positioned near the tongue of the shoe.

In August 2023, the European Office raised an objection to the registration on the ground of the expected inability of the mark to perform its essential function, namely to identify the origin of the product. The identification of the origin allows the consumer who purchases it to make the same choice in a subsequent purchase, if the experience proves to be positive, or another choice, if the experience proves to be negative.

The mark for which registration was sought, according to the EUIPO, was composed of a set of features of a purely decorative nature, with the result that the consumer would not be able to identify the origin of the product, just by looking at the article of footwear. Furthermore, the position of the sign and its representation would have been in accordance with the customs of the sector, and therefore the application would have lacked distinctiveness in this respect as well.

In December 2023, the applicant filed its reply to the European Office's objections, arguing:

- that it would be common practice in the footwear sector to affix marks on the outside of shoes, so that they are visible even from a distance and recognisable to the relevant public. In support of that argument, the applicant attached several precedents, such as the position of marks granted by the EUIPO to other fashion designers, such as Sergio Rossi and Livia Foderà;

- that the pendants constituting part of the position mark had previously been registered as three-dimensional marks with numerous trade mark offices around the world. Furthermore, Loro Piana has, for several years, already been marketing shoe models featuring the combination for which registration as a position mark is sought. Those circumstances show that the sign applied for possesses such characteristics as to make it immediately distinctive for the relevant public;

- that the company has long been active in the field of anti-counterfeiting and has successfully had numerous products containing the position mark in question withdrawn. This shows that the distinctive sign is already well known to the relevant public and to the global market, which offers it for sale in numerous counterfeit versions;

- that the position mark at issue is not a purely decorative sign, but a combination of elements which, although simple, are always affixed in the same order, thus assuming distinctiveness.

However, the EUIPO, in ruling on the matter, rejected the application, confirming the finding that the mark lacked distinctiveness.

The Office - while agreeing with the assumption that it is common practice in the fashion industry to place decorative elements on shoe uppers - considered that this argument was not sufficient to prove the association of a specific product with a specific mark. Conversely, the presence of the above-mentioned practice would show that the sign in question does not diverge from what is already on the market, with a consequent lack of distinctiveness.

Moreover, according to the EUIPO, the precedents cited by Loro Piana showed important differences from the position mark applied for: both Sergio Rossi's mark and Livia Foderà's mark contain verbal elements, albeit small in size, which increase the recognisability of the sign for the consumer.

With regard to the prior de facto use of Loro Piana's position mark on the market, the Office held that this circumstance was not capable of proving its original distinctive character; with regard to the three-dimensional registered marks granted to Loro Piana by certain national offices, it pointed out the presence in those marks, unlike the one applied for, of the verbal elements "LP" and "Loro Piana".

Finally, the EUIPO clarified that the imitation of the product that de facto incorporates the elements constituting the position mark applied for is not sufficient, in itself, to prove the registrability of the same: a great many clothing and footwear products are copied by counterfeiters, even if the original product does not enjoy the protection reserved for trade marks.