Acquired distinctiveness evidence must cover all territories where mark is descriptive

In Ferrari F.lli Lunelli SpA v Office for Harmonisation in the Internal Market (OHIM) (Case T-104/11, February 1 2013), the General Court has confirmed a decision of the Second Board of Appeal of OHIM concerning the Community trademark (CTM) designation of a WIPO international registration of the following mark covering wines and sparkling wines, among other goods, in Class 33 of the Nice Classification:

The court confirmed that the mark did not satisfy the absolute grounds for registration under Article 7(1)(b) and (c) of the Community Trademark Regulation (207/2009) as it was descriptive and therefore not distinctive in respect of wines and sparkling wines.

The evidence that had been submitted by the applicant in an attempt to overcome the objection by demonstrating that the mark had acquired distinctive character in the relevant member states was not sufficient, as it did not cover all of the territories in which the mark was deemed descriptive in relation to the designated goods.

The General Court first considered the application of Article 7(1)(b) and (c) of the regulation. On the basis that the term 'perlé' is used to describe lightly sparkling wines, the General Court confirmed the Board of Appeal’s decision that PERLE’ would be perceived by the general public as denoting a characteristic of wines and sparkling wines, and therefore was not distinctive, as consumers would not be able to identify the origin of the product on the basis of the mark.

The court further held that, by directly designating, or referring to a characteristic of the goods and/or services covered, a mark is incapable of identifying the origin of these goods and/or services to the relevant public, and must be refused registration under Article 7(1)(c).

The court found that the mark PERLE’ was substantially identical to the term 'perlé' for the general public to directly perceive, without further reflection, the mark as indicating a characteristic of the wines and sparkling wines covered by the application. The General Court found that the word 'perlé' was used to describe a lightly sparkling wine. The use of an apostrophe instead of an acute accent on the final 'e' of the mark did not make it distinctive. The General Court confirmed the view of the Board of Appeal that the addition of an apostrophe was highly reminiscent of the acute accent on the final 'e' of 'perlé', and that the relevant public would still perceive the mark as designating a characteristic of the wines and sparkling wines covered by the mark applied for.

In this case, the 'relevant public' was defined as consumers of wines and sparkling wines. This included wine professionals and the general public who speak English and French, as the term 'perlé' appears in English and French vocabulary. The General Court indicated that there was an English and French cultural aspect to wine, a great proportion of the public were average wine consumers with a knowledge of wine, and they would understand the meaning of the term 'perlé'. Even where the average consumer did not understand the meaning of the term, it would often purchase wine with the assistance of a wine professional, who would understand the meaning of the term and provide necessary guidance. In addition, the term 'perlé' is defined in dictionaries and on the internet, so the average consumer would readily have access to the meaning of the mark. Therefore, the General Court deemed that it would be reasonable to acknowledge public awareness of the meaning of 'perlé' in relation to wines.

The General Court stressed that a descriptive mark does not, at the time of registration, have to be effectively used to designate the goods and/or service covered by an application; it is enough that it could be used to do so. Equally, even where there are terms other than the mark to describe the designated goods and/or services, or where a mark has meanings other than the descriptive one, it will still be considered descriptive.

The General Court dismissed the appeal under Article 7(1)(b) and (c), on the grounds that the mark applied for, which was substantially identical to the term 'perlé', was descriptive of sparkling wines, could not indicate the origin of the designated goods to the relevant consumer and, therefore, should be refused.

Turning to acquired distinctiveness under Article 7(3), the General Court dismissed the applicant’s arguments that the Board of Appeal had not properly considered the evidence of acquired distinctiveness that it had submitted.

The court stated that, to show that a mark has acquired distinctive character, the evidence must demonstrate this in relation to a significant proportion of the relevant public in all territories where the mark is deemed to lack distinctive character. In this case, the mark was found to be descriptive in respect of French and English-speaking consumers, and therefore in the United Kingdom, France, Belgium, Luxembourg, Malta and Ireland. As the applicant had submitted evidence only relating to the United Kingdom and France, this was deemed insufficient to demonstrate that the mark had acquired the necessary distinctive character to overcome this objection.

Therefore, the General Court dismissed the appeal under Article 7(3), and the application was refused in respect of "wines and sparkling wines". 

This judgment is not particularly surprising in view of the similarity between the mark applied for and a clearly descriptive term. However, it does provide a useful reminder that evidence of acquired distinctiveness must address the entire geographical area to which it is deemed applicable.

Amanda McDowall and Chris McLeod, Squire Sanders (UK) LLP, London