What has happened?

• The EUIPO Board of Appeal has found in favour of bicycle and drive train components brand SRAM LLC in their appeal against the refusal of the registration of the position mark depicted below for bicycle parts, namely cassettes, sprockets and sprocket wheels in class 12. 

• Position marks (like shape marks) are only registrable if they differ from the norms and customs of the sector concerned.

• Designated as a ring like red element between the sixth and seventh sprocket (or gear) of a bike's drivetrain, the applied-for mark was initially found to be non-distinctive, serving solely as a decoration of the goods.

• Over-turning the decision, the Board held that this red-coloured element, placed in a highly functional area yet serving no functional role, would draw the immediate attention of consumers and be perceived as a distinctive sign. The 'differs from the norms and customs of the sector' test was satisfied.

• The case is a good example of a position mark being accepted for registration – a relatively rare occurrence. There is an interesting discussion of the existence of a specialist sub-public with particular knowledge and interest in bikes and their components. It also illustrates that – for position marks – context and placement is key.

Want to know more?

The examiner found that the mark was non-distinctive as there were examples of other bike components in red that could be found online, and the mark had no eye-catching features which would allow it to operate as an indicator of the commercial origin of the claimed goods. 
SRAM made various observations including that:

• The mark added an unnecessary technical element to the goods.

• The position mark shows creativity, and is novel in the bike component market.

• SRAM's possession of a registration for the mark SRAM RED and its flagship SRAM Red eTap groupset would enable consumers to identify the position mark as originating from SRAM. 

Finding for SRAM, the Board held that the relevant goods applied for were targeted at the general public, but also crucially at a specialised group of the relevant public with enhanced knowledge in the cycling sector. This public pays particular interest to the technical characteristics of cassettes, sprockets and other bike components, such that its level of attention must be generally considered to be higher than average. The red-coloured element of the mark, placed in a highly functional area yet serving no functional role, would draw the immediate attention of consumers and be perceived as a distinctive sign.

The Board concluded that the mark is registrable since it "departs significantly from the norms or customs of the bicycle components sector due to its unconventional placement, stark aesthetic contrast and lack of functional contribution. These factors collectively ensure that the sign is not perceived as a mere decorative feature but as a distinctive and recognisable trade mark."

This decision highlights that context and placement is key for position marks.