Glass texture has not acquired distinctive character, says CFI

In Glaverbel SA v Office for Harmonization in the Internal Market (OHIM) (Case T-141/06), the Court of First Instance (CFI) has upheld the Fourth Board of Appeal of OHIM's decision finding that Glaverbel SA's textured glass surface had not acquired distinctive character.

Glaverbel SA filed an application for the registration of a design consisting of the texture of a glass surface for goods in Classes 19 and 21 of the Nice Classification. OHIM raised objections about the inherent registrability of the mark. Glaverbel argued that the mark was inherently registrable and that it had acquired distinctiveness through the use which had been made of it since approximately 1970. OHIM refused to register the mark. The Fourth Board of Appeal dismissed the appeal brought by Glaverbel against the decision. Glaverbel appealed to the CFI.

In the course of the proceedings, Glaverbel limited the list of goods at issue and put forth a single plea alleging that the design had acquired distinctiveness through use. Glaverbel based its arguments on two elements: the determination as to which group of consumers constituted the target public and the assessment of evidence.

With regard to the target public, Glaverbel argued that the goods covered by the mark at issue were aimed at specialists only, namely members of the building trade and glass industry. The CFI disagreed, finding that the patterned glass and glass sheets could also be bought and used by final consumers. With respect to the other goods claimed by Glaverbel, the CFI found that the fact that contracts of sale would be concluded only between Glaverbel and specialists was insufficient to conclude that the target public consists exclusively of professionals. Referring to the basic principle that trademarks serve as an indication of origin, the CFI pointed out that the perception of consumers and end users is decisive, even where the goods are bought by specialists. According to the CFI, final consumers play an important role in choosing the designs by using catalogues or samples (in particular where a design remains visible in the final product and thus has an aesthetic function), notwithstanding the fact that the glass sheets will then be bought by the professionals employed to carry out the work. Therefore, the CFI concluded that the target public is made up of the general public for all goods covered by the application.

With regard to the assessment of evidence, Glaverbel submitted declarations from purchasers and users of the goods, trade journalists, wholesalers and competing manufacturers in 10 of the 15 member states as at the date of the application. Glaverbel also provided evidence (including figures on turnover and advertising expenditures) that the mark has been used for over 30 years.

The CFI stated that in order to assess whether a mark has become distinctive through use, such abstract data was insufficient. Account must be taken of:

• the market share held by the mark;
  
  
• how intensive, geographically wide-spread and long-standing use of the mark has been;
  
  
• the amount invested in promoting the mark; and
  
  
• the proportion of the relevant class of persons who consider the sign in question as a trademark.

The CFI concluded that the evidence submitted by Glaverbel was insufficient to prove that the mark had acquired distinctiveness throughout the European Union. According to the CFI, evidence of use of word marks may be limited to areas where the word in question is not distinctive. However, in the case of non-word marks, it may be assumed that the assessment of their distinctiveness will be the same throughout the European Union. Therefore, evidence must be provided that the mark has acquired distinctiveness in all EU member states. As Glaverbel submitted declarations for only 10 of the 15 member states, the evidence was insufficient, even though Glaverbel argued that the 10 member states covered 90% of the population of the European Union at the time. In addition, the CFI stated that sales volumes and advertising material represent only secondary evidence which cannot replace information on the market share, the number of catalogues distributed and other relevant information to prove acquired distinctiveness.

Therefore, the CFI dismissed the appeal and affirmed the refusal to register Glaverbel's mark.

Carsten Albrecht, Lovells LLP, Hamburg