Evidence of acquired distinctiveness in certain countries held to be insufficient

European Union
In Liz Earle Beauty Co Ltd v Office for Harmonisation in the Internal Market (OHIM) (Case T-307/09, December 9 2010), the General Court has partially overturned a decision of OHIM, upheld by its Second Board of Appeal, that evidence intended to show acquired distinctiveness was insufficient to do so.        

In December 2007 Liz Earle Beauty Co Ltd applied to register the word mark NATURALLY ACTIVE as a Community trademark (CTM) for goods and services in Classes 3, 5, 16, 18, 35 and 44 of the Nice Classification. The examiner refused the application under Article 7(1)(b) of the Community Trademark Regulation (40/94), now the Community Trademark Regulation (207/2009), for lack of distinctive character. The examiner also considered that the evidence filed by Liz Earle did not show distinctive character under Article 7(3). Liz Earle appealed but the Board of Appeal held that it should have filed evidence covering the entire European Union, rather than Ireland and the United Kingdom, in order to show acquired distinctiveness across the European Union.

Liz Earle appealed to the General Court, requesting that:
  • the decision of the Board of Appeal be annulled;
  • the court declare that the application should be published and registered; and
  • costs be awarded against OHIM.
OHIM, in turn, argued that the court should dismiss the appeal and award costs against Liz Earle.

The court first addressed OHIM’s claim that the court could not make a declaration regarding publication and registration: it agreed that it could not do this because it would equate to issuing directions to OHIM. It then addressed OHIM’s claim that Liz Earle’s appeal contained new evidence which the court should not consider because its role was to review the legality of decisions by the Boards of Appeal: again, it agreed that it should disregard this evidence.

In relation to Article 7(1)(b), the court overturned the Board of Appeal in relation to the Class 18 goods, namely “Wash bags, cosmetic bags and cases, beach bags, handbags, shoulder bags, draw string bags, purses, wallets, vanity cases, make-up bags, canvas bags; cases for mirrors”, because the board had failed to distinguish between goods and services directly related to cosmetics, namely those in each of the other classes, and those in Class 18. For all those other goods and services, the court held that the meaning of the mark was clear for all of them because they related to cosmetics and beauty care.

In relation to Article 7(3), the issue was whether the Board of Appeal had construed the concept of European English-speakers too broadly or whether Liz Earle’s construction, limited to UK and Irish nationals, was too narrow. Case law such as New Look v OHIM (Case T-435/07) had previously established that word marks consisting of a grammatically correct combination of English words may have a meaning for members of the public who are not native English speakers (eg, in Scandinavia, the Netherland, Malta and Cyprus). As Liz Earle had filed no evidence beyond the United Kingdom, Ireland and Germany, the court could not hold that the mark had acquired distinctiveness in the European Union. It therefore dismissed the appeal other than in relation to the Class 18 goods and ordered:
  • Liz Earle to pay its costs and two thirds of OHIM’s costs; and
  • OHIM to pay the other third of its own costs.
On balance, this decision is not surprising. The case law is reasonably clear on the geographical extent of evidence required in relation to marks such as this. Interestingly, a 2008 CTM application by Liz Earle for the word mark NATURALLY ACTIVE INGREDIENTS was also refused by OHIM, with the refusal apparently not appealed.

Chris McLeod, Hammonds LLP, London

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