When can we state that a trademark, ab initio devoid of distinctive character, has become distinctive as a consequence of the use which has been made of it?
The acquisition of distinctive character in a trademark is also known as SECONDARY MEANING.
In this article we investigate how this acquisition must take place in a EU trademark (which has a unitary character) according to the opinion of the EU Court in the judgment of 6 September 2018 (case C-547/17 P).
The company, owner of the EU trademark ( figurative trademark consisting of three vertical bands, which had been considered devoid of distinctive character and, as such, not registrable for absolute grounds), demonstrated that the trademark had acquired distinctive character due to use made of it in France, Italy, The Netherlands and the United Kingdom, ie in four Member States of the European Union whose population is about 40% of the total EU population. In the opinion of this company, the acquisition of distinctive character had been demonstrated in a significant part of the Union, therefore the mark could be registered.
The Court clarifies (paragraphs 24 and 25) that a sign can be registered as EU trademark only if it is demonstrated that it has become distinctive as a consequence of the use which has been made of it in the part of the Union in which it did not originally have such character.
“It follows that, with regard to a mark that is, ab initio, devoid of distinctive character across all Member States, such a mark can be registered pursuant to that provision only if it is provided that it has acquired distinctive character through use throughout the territory of the European Union”.
It is also true, however, that although the acquisition of distinctive character through use must be proved for the part of the Union in which it did not have such a character,
“it would, however, be unreasonable to require proof of such acquisition for each individual Member State”. (paragraph 26 of the judgment).
But then … why is not sufficient the demonstration in a territory whose population is about 40% of the EU population?
The Court provides that:
“although it is not necessary, for the purpose of registering, 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 through the Member States of the European Union”
(paragraph 28 of the judgment).
The principle is that,
when the mark is devoid of distinctive character in all the Member States of the EU, proof of the acquisition of distinctive character through use must relate to all Member States and not just a part of them, although significant at the level of population
At the end, and for the sake of completeness of information, it should also be said that the owner of the trademark affirmed the acquisition of distinctive character also in other EU Members (Austria, Germany, Belgium Spain and Hungary) through invoices and sales figures. However, these documents do not demonstrate the knowledge of the brand by the public, namely do not demonstrate the requisite which can determine the acquisition of distinctive character, but only a relationship between suppliers and distributors.
The Court, therefore, did not accept such documents as evidences.