How do you acquire distinctiveness in the EU?
The EU General Court has reaffirmed the high hurdle for proving acquired distinctiveness set out in the KitKat case in a couple of recent judgments involving unconventional trade mark applications.
Article 7(3) of the EUTM Regulation provides that a trade mark can be registered if it has acquired a distinctive character as a result of its use in trade. The applicant must provide evidence that it has acquired distinctive character through use throughout the EU.
In the KitKat case (Joined Cases C‑84/17 P, C‑85/17 P and C‑95/17 P), the CJEU stated that “although it is not necessary, for the purposes of registering, on the basis of Article 7(3) of Regulation No 207/2009, a mark that is, ab initio, devoid of distinctive character throughout all the Member States of the European Union, that evidence be submitted, in respect of each individual Member State, of the acquisition by that mark of distinctive character through use, the evidence submitted must be capable of establishing such acquisition throughout the Member States of the European Union.”
It explained that evidence showing acquisition of distinctive character through use could be relevant to several Member States, or even the whole of the EU, especially where several states are treated as the same national market.
In Case T-275/21, the EU General Court upheld an EUIPO invalidity decision regarding Louis Vuitton’s International Registration designating the EU for a figurative mark with a chequerboard pattern (pictured) for goods in class 18.
For reasons of procedural economy, the Board had considered whether the mark had acquired distinctive character in Bulgaria, Estonia, Latvia, Lithuania, Slovakia and Slovenia (all states, along with Malta, where LV had no stores). It found that it had not.
LV argued that the Board had not made an overall assessment of all the evidence and disregarded the Court’s earlier guidance.
The Court largely agreed with the Board, finding that the evidence submitted was either not relevant or of limited value. The evidence included documents showing the value and market share of the brand, information on the history of the mark, sales invoices, catalogues, advertising campaigns and media coverage, statements concerning magazine distribution, online use, experts’ statements, opinion polls and evidence of infringement proceedings.
The Court reversed the Board’s finding with regard to Estonia but upheld it for all the other Member States. It rejected LV’s arguments around the geographical grouping of countries, saying these were unsubstantiated, and added: “it was entirely open to the applicant [LV] to adduce various types and means of accessible evidence concerning either a single Member State or several Member States, taken together, or the whole of the European Union, provided it was sufficiently specific, substantiated and credible.”
A very recent judgment, Case T-650/21, also addresses acquired distinctiveness. In this case, the mark (pictured) was registered for various household goods and services. Following an invalidity attack, the mark was found to be descriptive for Spanish, Italian and Portuguese speakers (Casa means House in English) and therefore invalid.
The Board of Appeal also found that the applicant, Casa International, had not shown that the mark had acquired distinctive character through use in Spain, Italy and Portugal.
Casa International challenged the Board’s assessment of its market surveys for Spain and Portugal, and also argued that these survey results could be extrapolated to Italy as the three countries form part of the same language area.
However, the Court said that Casa did not put forward any arguments in support of this extrapolation; the three languages do not belong in the same language area; there is no geographic proximity between Spain/Portugal and Italy; and there was no evidence that they were grouped together in a distribution network.
In summary, said the Court, “that evidence is not capable of demonstrating that the Italian public has a sufficient knowledge of the goods and services that are present on the Spanish or Portuguese market … or that the three countries form a cross-border market” Moreover, “the mere fact that similar evidence in the form of brochures and lists of shops was submitted in respect of the three countries was clearly insufficient for extrapolation purposes.”
As acquired distinctiveness was not demonstrated for Italy, it was not necessary to examine the evidence for Spain and Portugal.
What does this mean?
These cases emphasise how hard it is to prove acquired distinctiveness throughout the EU. Following the KitKat judgment, there was much discussion as to whether it would be possible to extrapolate evidence from one country, such as Germany or France, to show acquired distinctiveness in a similar Member State, such as Austria or Belgium.
These judgments indicate that to be convincing such extrapolation needs to be fully argued and evidenced. Merely asserting that certain countries form part of the same group is not going to be enough!