Some notes about geographic trademarks

Due to the development of the world, there has been the rising of many new non-traditional trademarks which are different from the traditional word or visual marks. Non-traditional marks are a new, unique and unrestricted group of trademarks. According to EUIPN (European Union Intellectual Property Network), non-traditional marks include shape, position, pattern, color, sound, scent, motion, multimedia, hologram, etc. In this article, we are going to learn about the “geographic trademark”.

There are many marks that have become popular and distinctive based on how their labels and logos are placed on a certain position on a product. But rarely did people know that the brands that produce such products have the right to claim exclusive rights to the positioning of their marks.

‘Geographic marks’, which fall under the category of ‘unique marks’, allow owners to claim rights to the way their labels are placed on a product, based on its distinctiveness.

The World Intellectual Property Organization (WIPO) defines a ‘geographic mark’ as a sign, represented graphically, positioned on a specific part of the product with a constant size or a specific proportion of the product.

Thus, a geographic mark includes two aspects – the mark/sign and the position of the mark on a product. In other words, WIPO identifies a placemark as an element of identical size placed on a product in a fixed location. Accordingly, such a trademark application is primarily based on the mark’s setpoint or ‘position’ as the most important element in the detailed description.

It should be noted that positions will not be able to be registered if the description indicates that the position of the subject on the product changes. To claim the exclusive right to trademark positioning, the applicant is required to establish the fact that the logo along with its geographic on their product is distinctive enough to serve as a source of identification.

Geographic trademarks rules

For information, the “Guide to Trademark Examination” published by the Turkish Patent and Trademark Office (TURKPATENT) explains geographic marks and the definitions in this guide are the same as the interpretation of the European Union Trade Mark (EUTMR). According to this guide, the mandatory and optional requirements for geographic marks are:

– An identification of the position and size of the mark is required for related goods.

– Mandatory consideration of the presence of other details that are not part of the registered trademark. Can give preference to dashed or dotted lines.

– Optionally add or not add a description explaining how the symbol/label/mark is affixed to the goods. The presentation should clearly identify the position of the mark as well as its size or proportions to the product. Therefore, under Article 3 (2) of the European Union Trade Mark (EUTMR), the description can only be used for interpretation and cannot replace a visual disclaimer.

In addition, under Article 7(1)(a) of the European Union Trade Mark (EUTMR), the registration authority may refuse goods for which the position of the mark is unclear.

For example, if a placemark is applied to clothing, shoe, and hats, but only identifies the position of the mark on the hat, the application for clothing and shoe will be rejected due to the fact that the geographic trademark application is for the indication of hats only.

From real-life experience, the geographic mark is usually granted for shoe products, not for hats and a label in a unique position on a cloth. This is because the shoes are small, and the branding on them is nearly 100% fixed, on the 2 sides of the shoes, nearly never at the bottom or inside the shoes as the sides are where the logos can be seen in a normal way.

The European Union Intellectual Property Office (EUIPO) once accepted an application for a side geographic trademark for a pair of sports shoes with a figurative element placed on the outer surface of the upper part of the shoe, extending vertically from the center of the collar down to the sole.

***Other Articles***

– You could see The trademark fee in EU and UK here.

– You could visit here to see Procedure of Trademark in European Union.

– You could visit here to check Required documents of filing trademark in European Union.

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