Advice on evidence of acquired distinctiveness issued

The European Court of First Instance (CFI) has upheld the Office for Harmonization in the Internal Market's refusal to register the mark GOLF USA. In doing so, the court has provided some helpful advice concerning the documentation necessary to prove that a mark has acquired distinctiveness.

Golf USA Inc applied to register the word mark GOLF USA for a wide variety of goods in Class 25 of the Nice Classification and for golf-related goods and services in Classes 28 and 35. The OHIM examiner rejected the application on the basis that the mark was descriptive and lacked distinctiveness for all the goods/services, and found further that Golf USA had not filed sufficient evidence of use of the mark in the European Union. The OHIM Second Board of Appeal confirmed, although it held that the mark was not descriptive in Class 25, merely lacking distinctiveness in violation of Article 7(1)(b) of the First Trademarks Directive. The board also rejected the applicant's arguments concerning:

• the distinctive character acquired through use;
  
  
• the registration by OHIM of similar marks; and
  
  
• the registration of the mark applied for as a national mark in several European member states.
  

On appeal to the CFI, Golf USA was unsuccessful with its argument that the mark was objectively distinctive. In a somewhat cryptic passage in Paragraph 33 of the judgment, which seems to ignore the premise that weak marks have a narrow scope of protection, the court stated that:

"the scope of the exclusive right of the proprietor of the mark ... extends beyond the use of the mark in the narrow sense, since it also encompasses terms that entail a likelihood of confusion with that mark. In the present case, it appears at least possible, if not likely, in the case of a registration of the mark applied for, that prudent enterprises which are active in the golf field will choose to avoid using a combination of the terms 'golf' and 'USA' in order to avoid any risk of making themselves liable towards the proprietor of the GOLF USA trademark."

Golf USA did raise a novel ground of appeal, which maintained that the board's refusal to consider evidence that the mark had been registered by five national trademark offices within the European Union and that similar marks had been registered by OHIM was discriminatory in violation of Article 14 of the European Convention for the Protection of Human Rights and Fundamental Freedoms. The court held that this claim was based on the principle of equal treatment, which is already a general principle of EU law. The CFI concluded that it is well settled that prior OHIM registrations and registrations in member states at the national level can be relevant factors in decisions taken by OHIM, but they are not binding in this regard.

Finally, Golf USA asserted that OHIM and the Board of Appeal had erred in not accepting that the mark had acquired distinctiveness through use. The CFI rejected this plea, holding firstly that the evidence presented for the first time before the court was inadmissible, with the reasoning that the purpose of the appeal was to determine only whether the board had erred based on the materials before it. Next, the CFI determined that the relevant market for a mark such as GOLF USA was, in effect, the entire European Union. Thus, the board was correct in finding that evidence from use in only a few countries, here five EU member states, was insufficient. Thereafter, the CFI challenged the veracity of the evidence filed by Golf USA, rejecting the undated documents. Lastly, the CFI listed what it felt was missing from the documentation of use:

• a European catalogue of Golf USA's products;
  
  
• details of Golf USA's share of the European market;
  
  
• Golf USA's investments in the marketing of the products and services in Europe; and
  
  
• information relating to consumer awareness, such as statements from Chambers of Commerce or trade associations, or opinion polls.
  

These factors, combined with the invoices (which the court found acceptable, except where they were too old and not supported by newer documents) indicated that the CFI may have come to a different conclusion had Golf USA provided such information (at the latest) before the Board of Appeal.

Peter Gustav Olson, Plesner, Copenhagen