European Perspectives

ECJ Mulls Descriptive Marks: Is Distinctiveness in Part of Member State Enough?

Descriptive words are not normally registrable as trade marks in Europe. The courts regard it as in the public interest to preserve such marks for use by all. There are exceptions for marks that have come, by dint of long or extensive use, to denote one trader’s goods or services only. However, the evidence of acquired distinctiveness required to support such applications is normally very substantial.

How should a national office react, therefore, where a mark has acquired distinctiveness in part of a member state only? And how large does that part need to be to justify granting registration? This issue is pending before the ECJ and was recently considered by the Advocate General in Bovemij Verzekeringen NV v Benelux-Merkenbureau (Case C-108-05).

 

The Issue in Bovemij

In Bovemij, the applicant applied to register EUROPOLIS as a Benelux trade mark in respect of financial, real estate, travel and transport services. The Benelux office rejected the application on the grounds that the mark was non-distinctive, and that the applicant had failed to show acquired distinctiveness in the Benelux as a whole, as opposed to only part of it.

The appellate court sought guidance from the ECJ on whether acquired distinctiveness needed to be proved in the whole or in a substantial part of a member state and, if the latter would suffice, how substantial that part needed to be.

 

General Motors and Ford Revisited

A similar issue had arisen in General Motors Corporation v. Yplon S.A. (Case C-375/97) in 1999, in which the ECJ had held that a reputation in an earlier national mark in a substantial part of the relevant member state was enough for the purposes of opposing the use or registration of a later mark in that member state. There was no need for the reputation to extend to the whole of the member state. In General Motors, as in Bovemij, the member state was the Benelux, where different languages prevail in the three constituent regions.

In Bovemij, the Benelux national office considered that where a Benelux national mark was concerned, acquired distinctiveness needed to be shown throughout the Benelux territory.

This approach was modelled on the ECJ’s decision in Ford Motor Company v. OHIM

(T-91/99), holding that a CTM must be proved to have acquired distinctiveness throughout the Community where registration is sought on that basis. As the CTM and Benelux provisions on acquired distinctiveness were both based on the Trade Marks Harmonisation Directive, the Benelux office reasoned that the national approach should reflect in miniature the approach of the Community.

The Advocate-General, however, disagreed. She regarded Ford as inappropriate for national applications because CTMs and national marks were fundamentally different. The CTM created a new intellectual property right and afforded protection over such a geographically broad area that it was right to require proof of acquired distinctiveness over a much broader swathe. Moreover, the Benelux territory had already been considered in General Motors, albeit on a different issue, and it had been recognized in that case that sub-registration in the different parts of the Benelux was not possible. This contrasted with the CTM system where sub-registration at the national level was always an option.

 

How Much Is Enough?

The Advocate-General regarded the relevant consumer for the purposes of considering acquired distinctiveness to be the same linguistic community that would normally understand the mark as descriptive or non-distinctive. In the Benelux, that linguistic community might occupy only a part of the territory. There was, in her view, no requirement for acquired distinctiveness to be proved throughout a member state if the relevant linguistic community resided only in a part of it. Acquired distinctiveness in that part would be enough.

The test was whether at least a significant proportion of the relevant linguistic community had come to identify goods or services by the mark in question. That would involve showing use throughout the relevant linguistic community, but not necessarily throughout a member state.

 

Comment

The Advocate-General’s approach appears to be right: linguistic communities are and should be relevant for the purposes of determining whether word marks are, or have become, distinctive.

This view, if followed by the ECJ, will be of importance for member states like the Benelux, where different languages prevail in different regions. It will provide practical support to brand owners who rely on word marks used in only one linguistic region, and which may, for linguistic reasons, be impractical or unsuitable for use in the others. It seems right that registration should be available where a significant part of the relevant consumers in that linguistic community have come to recognise a sign as a trade mark, as a result of use throughout that community.

For member states with a single prevailing language, a concurring view from the ECJ would confirm that acquired distinctiveness must be shown among a significant number of relevant consumers throughout the member state, rather than simply in a substantial part of it, since the relevant linguistic community in such a state is the member state as a whole.

The Advocate-General’s reasoning, however, at times seems almost tenuous. Are the CTM and national systems so different that it can be right to permit national marks to be registered on the basis of acquired distinctiveness in part of that state only, but not to permit CTMs to be registered through acquired distinctiveness only in the relevant linguistic part of the Community? Does the mere fact that there is no lower regional level at which registration can be sought justify permitting national registrations that would interfere with competitors in other parts of a member state, when registration of a CTM, on similar facts, would not be allowed?

How the ECJ will decide on this important point is by no means certain. We will be watching this space.