Background of the Case
Thom Browne, Inc., a luxury fashion house, applied for an EU trademark – n.º 018980277 - in January 2024 for a position mark consisting of four horizontal white stripes placed on the upper left sleeve of garments (e.g. shirts, jackets, dresses) as set below:
The mark was a signature “four-bar” design that Thom Browne uses on apparel, intended as a brand identifier. On March 25, 2025, the EU Intellectual Property Office (EUIPO) refused this application under Article 7(1)(b) EUTMR, finding the mark devoid of distinctive character. In other words, the Office concluded that consumers would not perceive four stripes on a sleeve as a trademark indicating origin, but rather as a decorative element.
In other words, the Office concluded that consumers would not perceive four stripes on a sleeve as a trademark indicating origin, but rather as a decorative element. See below:
Examination phase
In the examination proceedings, Thom Browne’s legal team argued that the four-bar motif does possess at least a minimal degree of distinctiveness. They pointed out that an internet search for “four bars shirts” yields many results showcasing Thom Browne’s products, implying that the design is strongly associated with their brand. They contended that the EUIPO had failed to consider the actual use and recognition of the mark in the marketplace, and that the pattern of four stripes had in fact come to signify Thom Browne in the eyes of consumers. Essentially, the applicant asserted that the mark was more than a simple decoration and had inherent distinctiveness (or at least had acquired distinctiveness through use, even though no formal evidence was submitted).
Decision
The EUIPO examiner remained unpersuaded and refused the mark as non-distinctive. In its decision, the Office reasoned that four parallel stripes on a sleeve are a common design feature in the fashion industry, not a source-indicating symbol. The placement and appearance of the stripes were found to “not significantly differ from the usual practices in the relevant sector”, so the average consumer would view them as ornamental striping rather than a badge of origin. Consumers are accustomed to seeing stripes and other basic shapes as mere decoration on clothing, unless proven otherwise. The EUIPO noted that while consumers readily recognize word marks or distinctive logos as trademarks, they do not automatically perceive a few stripes on a sleeve as a brand identifier.
The Office emphasized that simple geometric motifs (lines, stripes, etc.) lack inherent distinctiveness under Article 7(1)(b). In the absence of evidence that the public has been educated to recognize the four-stripe design as a mark (through extensive use or promotion), the sign could not be accepted. Thom Browne had not invoked Article 7(3) EUTMR (acquired distinctiveness) during examination, nor furnished supporting evidence. Furthermore, the decision states that the Office is under no obligation to establish market use of the trademark; this burden lies with the applicant.
The examiner remarked that the mere fact a design is used by a brand does not automatically endow it with distinctiveness in the minds of the public. Much of the applicant’s internet evidence was discounted because many search results were from third-party resellers or unrelated products, which did not convincingly show that consumers exclusively associate four bars with Thom Browne. Accordingly, the EUIPO refused the mark for lack of inherent distinctiveness, noting that no acquired distinctiveness evidence was provided.
Legal Principles for Position Marks and Distinctiveness
Under EU law, position marks are registrable in principle, but they must meet the same distinctiveness requirement as any other trademark. Article 7(1)(b) EUTMR bars the registration of marks that are devoid of any distinctive character. The threshold question is whether the mark can function as a trademark – i.e. would the relevant public perceive the sign, in that position, as indicating the product’s commercial origin? As stated in the present decision, EUIPO practice and case law have consistently found that simple or commonplace shapes and designs (such as basic geometric figures, striping, or simple patterns) are ordinarily non-distinctive. Consumers typically see such elements as decorative or functional aspects of products, not as trademarks. In the fashion context, designs like stripes, patterns, or colors are often used ornamentally by many brands, so the public is not likely to attribute a single source to them.
Simply placing a common shape in an uncommon position seems to not be enough to confer distinctiveness. The mark in question must depart significantly from the norms or customs of the sector to be inherently distinctive.
The onus is on the applicant to demonstrate distinctiveness if the mark is not obviously distinctive. The EUIPO and courts can rely on general industry knowledge without needing to find specific examples of use1. If an applicant believes their design nevertheless serves as a mark, they must substantiate that claim with evidence. Article 7(3) EUTMR provides that an applicant may overcome a 7(1)(b) objection by proving the mark has acquired distinctive character through use.
It is worth noting that the applicant has appealed the EUIPO’s refusal, signaling its intention to persist in seeking protection for the four-stripe design. Interestingly, this is not the first attempt by Thom Browne, Inc. to register a similar position mark. A previous application (EUTM No. 017458738), also involving parallel stripe elements, was withdrawn at the appeal stage, suggesting a broader strategy involving multiple filings to test the registrability of such trademarks under EU law. This pattern of applications, including both refusals and withdrawals, reflects the brand’s ongoing efforts to secure exclusive rights over what it considers a signature branding element, despite the legal hurdles imposed by EUIPO practice and case law.
Author: Diogo Antunes, Legal Manager at Inventa.
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1 As clarified in T-194/01 – Soap Device (EU:T:2003:53), § The Office is under no obligation to conduct its own economic analysis or consumer surveys. – “In such circumstances, it is for the applicant for a trade mark to show that consumers' habits on the relevant market are different and the Office cannot be required to carry out an economic analysis of the market, let alone a consumer survey, to establish to what extent consumers pay attention to the get-up of a particular category of products. The applicant for such a mark is much better placed, given its thorough knowledge of the market (mentioned by the applicant itself), to provide specific and substantiated information on the matter.”
