ECJ upholds General Court decision rejecting application for PHOTOS.COM

In Getty Images (US) Inc v Office for Harmonisation in the Internal Market (OHIM) (Case C-70/13 P), the Court of Justice of the European Union (ECJ) has upheld a decision of the General Court rejecting a Community trademark (CTM) application for PHOTOS.COM on the basis that the mark lacked distinctive character.

Getty Images filed a CTM application for the word mark PHOTOS.COM in Classes 9, 42 and 45 of the Nice Classification, which covered, amongst other goods, computer software and licensing of images. OHIM refused registration. Upholding that decision, the Second Board of Appeal of OHIM found that the mark:

• lacked distinctive character under Article 7(1)(b) of the Community Trademark Regulation;
• was descriptive under Article 7(1)(c); and
• had not acquired any distinctive character in the English-speaking regions of the European Union for the purposes of Article 7(3).

The General Court upheld the decision of the Board of Appeal.

Appealing to the ECJ, Getty Images argued that PHOTOS.COM had the requisite degree of distinctive character since it had already registered two word marks identical to the word mark PHOTOS.COM as CTMs for identical or similar goods and services. Getty Images also surmised that the General Court had erred in law by not considering the mark as a whole when assessing distinctiveness. It submitted that the mark, as a domain name, had two components and the whole was greater than the sum of its parts, thereby making the mark distinctive. Getty Images also argued that the General Court should have found that the mark was not descriptive within the meaning of Article 7(1)(c). Finally, it argued that, in failing to explain why they treated this mark differently from those already registered, OHIM and the General Court had not correctly balanced the principles of equal treatment against the need to ensure that the law was observed.

Rejecting these arguments, the ECJ held that Getty Images could not rely upon their earlier marks to support a distinctiveness argument since they had not sought to rely on them before the General Court.

The fact that the General Court had assessed distinctiveness by looking at the mark PHOTOS.COM in its entirety was evident from its judgment. Examined as a whole, the mark PHOTOS.COM reproduced the standard structure of a domain name wherein a second-level domain name ('photo') and a top-level domain ('com') were separated by a dot. The components 'photos' and '.com' were “commonplace and customary” and, in the absence of any additional element to render an otherwise commonplace combination unusual or fanciful, the mark was not distinctive. Since the General Court had not erred in law by finding that the mark was devoid of distinctive character under Article 7(1)(b), there was no reason to consider Article 7(1)(c). 

As regards equal treatment, the ECJ stressed that OHIM had a duty to exercise its powers in accordance with the principles of equal treatment. OHIM accepted that it had to consider decisions regarding similar applications and determine with “special care” whether or not the application under examination should be decided as before. However, the principle of equal treatment had to be consistent with observance of the law.  Accordingly, an applicant could not rely on an illegal act to secure an identical decision. Legal certainty and sound administration required the examination of a trademark application to be “stringent and comprehensive” so as to prevent marks which fell short of these requirements from being registered. Each trademark application had to be assessed individually, and specific requirements had to be met so as to ensure that the mark did not fall foul of any of the absolute grounds for refusal. All these considerations were applicable even where the mark in question was identical to a mark already registered as a CTM with respect to identical or similar goods and services.

Since the mark in question lacked distinctive character under Article 7(1)(b), the General Court was entitled to hold that the mark PHOTOS.COM did not qualify for registration with respect to the goods and services detailed in the application. The principles of equal treatment and the protection of legitimate expectations were not breached.

Trademark owners wishing to register a mark as a CTM which is identical to a mark already registered by OHIM for partly identical or similar goods or services should be advised that there is no guarantee that the subsequent mark will be registered. Each CTM application is assessed individually and the successful earlier registration does not require OHIM to reach a similar decision.

Désirée Fields, McDermott Will & Emery UK LLP, London