Distinctiveness required on application date, rules court

European Union

In eCopy Inc v Office for Harmonization in the Internal Market, the European Court of First Instance has held that the distinctive character of a sign must be acquired by the date on which the application is made to register the sign as a Community trademark.

The issue arose when US company eCopy Inc applied to register 'eCopy' as a Community trademark for "software discs and associated apparatus for enabling the scanning and electronic distribution of documents over computer networks". The Office for Harmonization in the Internal Market (OHIM) refused the application on the grounds that the sign is descriptive and lacks distinctive character.

eCopy appealed, requesting that distinctiveness acquired through use be taken into account. The Board of Appeal dismissed, also finding that the sign is devoid of distinctive character. In relation to the claim of acquired distinctiveness, it held that (i) some of the evidence did not prove this, and (ii) the other evidence was dated later than the application date and therefore could not be considered.

The US company appealed to the European Court of First Instance. The OHIM defended its decision by submitting that distinctiveness at the application date is a precondition for registration under Article 7(3) of the Community Trademark Regulation.

The court affirmed the Board of Appeal's decision, stating that distinctive character must be acquired by the application date in order to avoid situations where the chances of taking into account a sign's acquired distinctiveness increase the longer the registration procedure takes.

Chris McLeod, McDermott Will & Emery, London

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