BASICS of acquired distinctiveness test clarified

In ColArt/Americas Inc v Office for Harmonization in the Internal Market (OHIM) (Case T-164/06, September 12 2007), the European Court of First Instance (CFI) has shed some light on what is needed to document the fact that a descriptive mark has acquired distinctiveness.

ColArt/Americas applied for the registration of the trademark BASICS for a broad list of goods typically used by artists in Class 2 of the Nice Classification. The OHIM refused the application on the grounds that the trademark:

• was descriptive in contravention of Article 7(1)(c) of the Community Trademark Regulation (40/94/EEC); and
  
  
• lacked distinctiveness in contravention of Article 7(1)(b).

On appeal to the OHIM Board of Appeal, ColArt/Americas asserted that the mark had acquired distinctiveness through use pursuant to Article 7(3) of the regulation.

The OHIM Fourth Board of Appeal held that since the word 'basics' is an English word, the relevant public was native English-speakers or persons who have a sufficient knowledge of the English language in the European Union. To such persons, the word 'basics' refers to basic goods - that is, the most important and elementary goods, or the goods most commonly used by artists. Therefore, the mark BASICS was descriptive and, accordingly, devoid of distinctiveness. Registration by OHIM of the same mark for different goods or of similar marks for the same goods, or registration of the mark in other jurisdictions was irrelevant according to current EU practice.

As regards ColArt/Americas' claim that the mark had acquired distinctiveness through use, the board held that the applicant had failed to prove use before the filing date in those parts of the European Union where the mark was considered to be lacking distinctive character. ColArt/Americas appealed to the CFI.

The CFI found that the mark described one of the characteristics of the relevant goods, namely the fact that they are basic goods for the fine arts and decoration. Thus, the descriptiveness finding was correct. Consistent with current European practice, the court held that since the mark was descriptive, it followed that the mark lacked distinctiveness. Moreover, the court held that prior decisions by OHIM and administrative and judicial bodies in other jurisdictions were irrelevant.

As regards the alleged acquired distinctiveness, the court held that ColArt/Americas had failed to prove that the mark had acquired distinctiveness in the parts of the European Union where the mark was considered to be descriptive, "namely the United Kingdom and Ireland". Even though the total sales in Europe were significant, the court focused on the situation in the United Kingdom and Ireland, and held that sales in these countries prior to the filing date were "minimal". Accordingly, the court affirmed that the OHIM board had not erred in rejecting the application.

This case indicates that applicants seeking to demonstrate acquired distinctiveness should focus on the evidence relating to the United Kingdom and Ireland. Establishing the mark in the United Kingdom and Ireland should thus be a priority for trademark owners considering the adoption of a possibly descriptive English term as a trademark in the European Union.

It will be interesting to see whether EU newcomer Malta, which has two official languages (Maltese and English), will join the United Kingdom and Ireland as a priority country.

Peter Gustav Olson, Plesner, Copenhagen