NEW LOOK Case shows how far applicants must go to show distinctiveness

European Union

In New Look Limited v Office for Harmonization in the Internal Market (OHIM) (Case T-435/07, November 26 2008), the Court of First Instance (CFI) has made it clear that in order to register a mark lacking distinctive character on the basis of acquired distinctiveness under Article 7(3) of the Community Trademark Regulation (40/94), an applicant must demonstrate that the mark has acquired distinctive character through use in the whole of the European Union, and not just the substantial part in which it was found to lack inherent distinctiveness.  

In 2002 New Look Limited, the high-street clothing retailer, filed an application for the registration of the word mark NEW LOOK as a Community trademark (CTM) for goods and services in Classes 3, 4, 9, 11, 14, 16, 18, 20, 25, 26, 28, 35 and 36 of the Nice Classification (including cosmetics, sunglasses, jewellery, articles of clothing, stationery, articles made of leather), all of which were targeted at the general public.
In 2004 the OHIM examiner informed New Look that the mark was not registrable for some of the goods listed on the application on the grounds that the mark lacked distinctive character and consisted exclusively of an indication which may serve to designate the characteristics of the goods, contrary to Articles 7(1)(b) and (c) of the regulation, respectively. The classes for which registration was refused were Classes 3, 9, 14, 18, 25, 26 and 35. 
New Look subsequently submitted evidence of use of the mark to demonstrate that it had acquired distinctiveness within the European Union. However, in 2006 the examiner upheld the objection on the grounds that such evidence did not sufficiently demonstrate the distinctive character of the mark. In addition, the examiner widened the objection to registration to include additional goods and services under Classes 16, 18 and 35.
In December 2006 New Look applied to register a declaration of division of its application in order to obtain registration in respect of those goods and services which were not objected to by the examiner. However, the examiner refused the new application in its entirety on the same basis as before.
The Board of Appeal upheld the examiner's decision, holding that:
  • the mark was devoid of distinctiveness; and
  • the evidence filed by New Look was not sufficiently adequate to show that the sign had acquired distinctive character through use in the minds of the general consumer public. 
The board took the view that the relevant public included:
  • those consumers of the category of goods in question within the European Union who were native English speakers; and
  • those who understood basic English. 
Thus, it concluded that the relevant public in these circumstances included the general public of Cyprus, Finland, Ireland, Malta, the Netherlands, the United Kingdom, the Scandinavian countries and “all places where fashion is an important commercial activity”.
New Look appealed to the CFI on the grounds that the board, in requiring it to adduce evidence of distinctive character in member states other than the United Kingdom and Ireland, had not complied with Article 7(3). It contended that according to current case law, it had to show evidence of use only in the substantial part of the European Union in which the mark was devoid of any distinctive character under Article 7(1)(b). New Look also asserted that where a mark is a word sign in English, it can be devoid of distinctive character only in the United Kingdom and Ireland, given that English is the native language in only those two member states. 
Rejecting the appeal, the CFI stated that a mark must be refused registration if it is devoid of distinctive character in part of the European Union. As such, if a mark is to be registered, it must have distinctive character throughout the European Union and not just a substantial part of it.
The CFI stated that a mark may be registered under Article 7(3) provided that evidence is produced to show that the mark has acquired distinctive character through use in the part of the European Union in which it did not have such character for the purposes of Article 7(1)(b). Furthermore, it is necessary to consider:
the presumed perception of an average consumer of the category of goods in question, who is reasonably well informed and reasonably observant and circumspect.
The CFI noted that the mark was an expression which was common in the English language and would therefore be understood to mean “new appearance” by the consumers who are native English speakers, as well as those with just a basic level of English. It followed that a mark which consists of a combination of English words which is grammatically correct will be understood not only by the English-speaking public, but also by the public which has sufficient knowledge of English. The CFI also noted that the case law on which New Look relied did not exclude the public of member states other than the United Kingdom and Ireland (see ColArt/Americas v OHIM (Case T-164/06)).
In addition, the CFI commented that “at the very least”, a basic level of English could be attributed to the Netherlands, Finland and the Scandinavian countries. The Board of Appeal was therefore correct in taking the view that the target public in those countries would understand the mark. The CFI also stated that the public in those countries would not attribute the mark to a “particular trade origin for the goods and services”, but would understand it to mean “a claim about a product or the change that product could confer on a person’s appearance”. Consequently, the board had correctly found that the mark was devoid of distinctive character in those countries.
However, the CFI disagreed with the board’s finding that the relevant public included the general public in “all places where fashion is an important commercial activity”. Labelling this phrase “vague”, the CFI stated that it was incorrect to assume that the general public in the fashion centres of the European Union would understand the expression 'new look'. Additionally, it found that since the board’s finding was not based on any evidence, New Look’s claim that those places were wrongly taken into account was acceptable. The CFI also commented that Cyprus and Malta could not be taken into account given that the application for the mark was made prior to the accession of those member states to the European Union.
Finally, the CFI held that contrary to what New Look claimed, it is not a complex procedure to establish the level of command of English required to understand the mark. As New Look had failed to adduce evidence of use of the mark in Finland, the Scandinavian countries and the Netherlands, it had failed to prove that the mark had acquired distinctive character through use throughout a relevant part of the European Union. 
The CFI thus dismissed the appeal in its entirety.
In light of this judgment, an applicant seeking to register a CTM consisting of English words devoid of any inherent distinctive character must show that the mark has acquired distinctive character in relevant non-English-speaking member states, as well as the United Kingdom and Ireland. The simpler and more readily understood the mark, particularly to non-English speakers, the wider the evidence of acquired distinctive character must go. 
Rupa Patel and Bratin Roy, McDermott Will & Emery UK LLP, London

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