REQUIREMENTS FOR DISTINCTIVENESS ACQUIRED THROUGH USE PURSUANT TO ART. 7 (3) COMMUNITY TRADEMARK REGULATION (CTMR)

Dr. Elisabeth Vorbuchner LL.M., Kador & Partner, Munich, Germany; September 9, 2000.

If the Office refuses to register the applied for trademark on absolute grounds of refusal according to Art. 7 (1) CTMR it is possible to submit formal evidence showing that the trademark has achieved distinctiveness in relation to the goods or services for which registration is requested in connection of the use which has been made of it pursuant to Art. 7 (3) CTMR.

The question arises as to what type of evidence must be submitted in order to successfully show that the applied for trademark has obtained the requisite degree of distinctiveness to be registered. Up to now there have been three judgements dealing with this topic:

1. Recent Judgements:

This question was decided by the European Court of Justice in the so-called "Chiemsee"-decision of May 07, 1999 and its ruling was taken into consideration in a case before the Community Trademark Office in which the applicant sought to register the numeral 7 as a wordmark (decision of June 22, 1999-R 63/1999-3-7).

Both judgements state that two conditions must be satisfied where a trademark is not inherently eligible for registration:

(1) The trademark must be used in the Community as a whole or, at least, in a substantial part thereof in such a way that

(2) a sufficiently large part of the relevant class of persons recognizes the sign as a distinctive trademark at the time the application is filed. The European Court of First Instance (decision of March 30, 2000-T 91/99) held that the distinctive character acquired through use must necessarily be demonstrated in that part of the Community where it was otherwise devoid of such character in the language concerned. This means if a sign is held to be devoid of distinctive character in English and French, use has to be claimed in the English-speaking and French-speaking parts of the Community. It is not sufficient to demonstrate use only in some other part of the Community. Accordingly, the Ford Motor Company's Community trademark "OPTIONS" filed for insurance and financing services was rejected for France as the applicant failed to claim distinctiveness through use in France.

Both of the condition above must be fulfilled for an exception to be granted under Art. 7 (3) CTMR. To comply with this assessment, one must present to the Office with information of the following kind (examples):

(a) the market share held by the mark;

(b) how intensive, geographically widespread and long-lasting the use of the mark has been;

(c) the amount invested by the undertaking in promoting the mark;

(d) the proportion of the relevant class of persons who, because of the mark, identify the goods as originating from a particular undertaking (e.g. by way of a market survey);

(e) statements from Chambers of Commerce or other trade and professional associations.

It follows from the foregoing that the main issue in any disputed case is whether the trademark concerned has been used in the course of trade in such a way as to achieve a level of recognition amongst consumer circles which allows them to establish a link between the trademark and the goods and services for which it is used.

2. Our Comments:

It should be noted that these decisions were based on acquired distinctiveness under Art. 7 (3) CTMR. They are relatively new and decided on each case's individuality. However, it follows for us from the reasoning of the decisions that the European Court of Justice and the European Court of First Instance as well as the Office for Harmonization construe Art. 7 (3) CTMR restrictively since this provision confers on the applicant the exclusive right to use the mark in the territory of the Community as a whole, even though the mark is not inherently eligible for registration since it is non-distinctive, descriptive or has a generic character under Art. 7 (1) (b), (c) or (d) CTMR.

Therefore, we are of the opinion that a merely occasional use of the trademark for the goods or services will not be sufficient to show evidence of acquired distinctiveness of the trademark. In the light of the foregoing we consider that it may, in some cases, be quite a burden on the applicant to show evidence of use to prove acquired distinctiveness. The applicant has to claim that the trademark concerned has been used in such a way as to acquire a distinctive character in a substantial part of the Community, including the specific part of the Community where it was devoid of any distinctive character.