Position mark - "button in the ear" of a teddy bear - not registrable as a Community Trademark

On 16 January 2014 the European General Court (EGC) decided that a button in the middle of the ear of a toy teddy bear (a so-called “position mark”) cannot be registered as a Community Trademark as it lacks distinctiveness (Decision T‑434/12 of 16.01.14). Introduction In order to assess  whether a mark possesses the necessary  distinctiveness or not, various factors need to be taken into account. On the one hand side, the court has to review the specific goods and services of the applied for trademark,  and, on the other hand, it has to determine if intended brand is capable to enable the average consumer to recognize the source of origin. Background of the Case and Subject Matter In the present case, the in Germany in 1880 founded well-known and high-end plush toy manufacturer, Margarete Steiff GmbH, filed for the following Community Trademark, in this specific case the “button in the ear” as a so called “position mark” – as seen below: The applicant  is convinced that its stuffed animals are recognized by the average consumer  because of the unusual placement and positioning of the button on the left ear in addition to the fact that it is made of metal and therefore stands out from the rest of the plush toy. For these reasons, the applicant argued, the bottom for the stuffed animals should be registered as a trademark as the average, generally well-informed consumer will recognize the product’s origin. The applicant uses the said button on its plush toys as follows: Decision of the EGC The EGC is of the opinion that the consumer is accustomed to a wide range of stuffed animals with many different designs and in countless variations.  Buttons placed on different parts of the stuffed animals are nothing special. Neither the material of the button, northe asymmetric application - only on the left ear - is unusual according to the EGC. As a consequence, the court decided that the button  as a typical design element does not give the consumer any information as to the products origin. As a result and for the reasons outlined briefly above, the EGC decided that the applied for “button” as a so-called “position mark” lacks distinctiveness and in this case cannot be registered as a Community Trademark.