POSITION MARK
Dr. Martens have been on the market since 1960. One of the most striking features of the shoes is the yellow stitching. In order to defend themselves against copycats, Airwair, the company behind Dr. Martens, registered a special trademark: a so-calledposition mark. A position mark protects the specific way in which the trademark is applied to the product. In this case yellow stitching on the edge of the shoe.
REGISTRATION ISN’T SIMPLE
Position marks are relatively new and have only been recently incorporated into EU-law. Registration of these types of trademarks is not easy. Many applications for position marks are rejected due to a lack of distinctive character, for example, because they are only seen as decorative or because they are too simple.
INTEGRATED
Because Airwair demonstrated a lot of evidence that the yellow stitching has a acquired distinctiveness and is already quite well known over a period of time, Dr. Martens did get their position mark and even received extensive protection from the court. For example, the company showed that national newspapersNRC Handelsbladandde Volkskrantcovered the recognisable yellow stitching in a story in 1993.
INFRINGEMENT
According to the court, Van Haren’s shoes infringe the position mark of Dr. Martens. The fact that the stitching on Van Haren’s shoes is not really yellow, but rather metallic or copper, is irrelevant, according to the judge: “depending on the light, they are very close in colour to it.”
MORE PROCEDURES
Yet the case is far from over with this ruling. Regardless of a possible appeal by Van Haren, the shoe shop is trying to cancel Airwair’s registered position mark in a separate procedure at the Benelux trademark office. The outcome of that remains to be seen, but this resounding court victory on behalf of Dr. Martens suggests that the company will also draw the longest straw at the trademark office.
Bas Kist
This article was previously published on Adformatie.
