The Procrustean fitting of trade marks under the requirements of clear and precise subject‐matter in the EU trade mark law : A case of position marks

Journal of World Intellectual Property 2021, t. 25, nr 1, s. 45-70.

In the European Union Trademark law (EUTM), clear and precise subject-matter of a trade mark is a prerequisite of proper filing and determines the conditions and scope of protection. Registration rules have evolved together with the meaning of this standard. The paper examines the legal status of position marks, which lacked their own registration specifics within initial EUTM, and thus were usually filed through other categories (figurative, colour, three-dimensional), and contrasts this practice with the registration scheme of the new law. The analysis looks into the effects of Court of Justice's guidance when retroactively applied to trade marks registered upon earlier law. The exemplary case of a blade of grass inside a bottle is used to map the meaning of ‘unaligned’ description and/or indication vis-à-vis the prime relevance of (graphic) representation. The final part explores how identifying the subject-matter of a position mark has an impact on assessing its distinctiveness, engaging within functionality objections and proving genuine use. The paper advocates for refraining from applying a fixed understanding of the requirement of clear and precise subject-matter, especially with regard to old registrations, and, a fortiori, to flexible subject-matter, such as position signs.