At first instance, the examiner held that the mark was non-distinctive, serving as a decoration of the goods. The examiner further stated that a red ring inserted between bike sprockets, in the absence of other distinctive elements, cannot be perceived as a trade mark because red components on bicycles are common. Examples of red components were referenced in the decision.

SRAM’s observations

• The element is applied uniformly, as an extra element occupying a stable position.
• The colour red creates a striking contrast against metallic cassettes and would be sufficiently eye catching to average consumers.
• The examples identified by the examiner were not comparable as there are no similar products on the market.
• SRAM owns the mark SRAM RED and has sold red bike components over many years, enabling consumers of class 12 products to identify the element as originating from SRAM.

The examiner upheld the refusal stating that the type of sign applied for influences the perception of the relevant public; signs that are indistinguishable from the appearance of the product will not normally be seen as indications of origin.

In this case, the sign is not distinguishable from being a part of the goods. It would only be distinctive if consumers were able to recognise the sign as distinguishing the international registration holder’s sprocket from those of other undertakings, it should also depart significantly from the customs of the sector.

The examiner also noted that there is nothing complex or eye catching in the mark allowing consumers to immediately perceive the sign as an indication of origin; the sign merely combines a basic geometric shape with a colour.

Finally, the examiner found that SRAM’s submissions regarding its use of the colour red were irrelevant: assessing distinctiveness cannot be linked to the international registration’s holder’s identity or professional activity.

SRAM appealed.

Findings of the EUIPO Board of Appeal

The Board of Appeal found that distinctiveness must be assessed by reference to the goods followed by the relevant public’s perception of the sign.

The relevant goods target the public at large and specialised public with knowledge in the cycling sector. The relevant public generally pays particular interest to the goods in contention owing to their technical characteristics. The relevant public’s level of attention must be higher than average.

The element would be viewed as eye catching and distinctive because of its unusual, uniform position and lack of functional purpose. The element does not contribute to the mechanical workings, performance, or durability of the cassette, distinguishing it from the functional components surrounding it. Placement of the element between the sprockets is unconventional and would draw immediate attention from consumers.

Introduction of a brightly coloured ring to a cassette would stand out, signaling to consumers that it serves a unique purpose, which will likely be perceived as an identifier of origin.

The Board of Appeal was unpersuaded that the sign would only be perceived as a decorative element; rather, in an environment where functional efficiency is paramount, a non-functional element stands out as a deliberate/ meaningful addition. Consequently, relevant consumers familiar with the technical nature of bike components will recognise the sign as a distinctive feature.

The appeal was therefore well-founded and the contested decision was annulled in its entirety.

In short

A clear assessment of the mark with reference to the goods/services and the relevant public’s perception is crucial.

Ensure position marks and the goods/services applied for are specific.

While this case is industry specific, it provides a good authority on position marks generally.