The Court confirms that the German plush toy manufacturer Steiff cannot register the attachment of a button or a flag by means of a button to the ear of a plush toy as a Community trade mark. This attachment lacks distinctiveness, as it does not, as such, allow the average European consumer to identify the commercial origin of the plush toy.
In 2010, the German plush toy manufacturer Steiff applied to the Office for Harmonization in the Internal Market (OHIM) for “position marks” as Community trade marks.
Steiff thereby sought protection at the European Union level – in the sense of an exclusive right – for a shiny or matte, round metal button affixed to the central part of the ear of any plush toy with ears, and for a rectangular, elongated fabric flag attached by means of such a button. Protection is sought neither for the pictorial representations in the mark as such, nor for the button or the flag attached by means of a button as such, but solely for the attachment of the button and the flag by means of such a button in the central part of the ear of plush toys.
OHIM rejected Steiff's applications, stating that the applied-for marks lacked distinctiveness. They did not allow consumers to identify the commercial origin of the goods – i.e., that it was a Steiff plush toy and not a plush toy from another manufacturer.
Steiff challenged these OHIM decisions before the General Court, arguing that OHIM had wrongly denied distinctiveness to the applied-for marks. With its judgments today, the General Court dismisses Steiff's actions. According to the General Court, the applied-for marks do not possess the minimum degree of distinctiveness required for registration as Community trade marks. The General Court first notes that the applied-for marks merge with a possible appearance of the plush toys. As “position marks,” they necessarily merge with the appearance of the plush toys, as they would not exist without the fixed connection of the button and the www.curia.europa.eu flag to the precisely defined location. Furthermore, buttons and small tags are common design elements for plush toys.
Since consumers do not ordinarily infer the commercial origin of goods from signs that merge with the appearance of the goods, the applied-for marks would therefore have to deviate significantly from the norm or common practice of the industry.
However, this is not the case. Firstly, buttons and flags are common design elements for plush toys, and secondly, consumers are accustomed to a very wide variety of these goods, their designs, and their possible configurations. Their attachment to the ear, which effectively creates an ordinary combination that consumers will perceive as a decorative or even (regarding the applied-for mark including the flag) functional element, cannot be considered exceptional. Consumers will merely perceive this design as a variation of the possible attachment of the button or the flag and button to other parts of such goods, or as a variation of any other embellishments attached to the ears.
Therefore, consumers cannot perceive this as an indication of commercial origin.
For the aforementioned reasons, it is also irrelevant that Steiff may be the sole manufacturer to attach shiny or matte, round metal buttons to the ears of plush toys, or to affix a rectangular, elongated fabric flag by means of such a button in the central part of the ear of plush toys.
Gericht der Europäischen Union, Urteil vom 16. Januar 2014 — T-433/12, http://dejure.org/dienste/vernetzung/rechtsprechung?Text=T-433/12> und T-434/12, <http://dejure.org/dienste/vernetzung/rechtsprechung?Text=T-434/12>, Margarete Steiff GmbH / HABM
Source: Press release of the European Court of Justice
Goldberg Attorneys at Law 2014
Attorney Michael Ullrich, LL.M. (Information Law)
Specialist Attorney for Information Technology Law
Email: info@goldberg.de
