PURE DIGITAL loses acquired distinctiveness appeal

European Union
In Imagination Technologies Ltd v Office for Harmonization in the Internal Market (OHIM) (Case C-542/07 P, June 11 2009), the European Court of Justice (ECJ) has upheld a decision of the Second Board of Appeal of OHIM in which the latter had refused to register the trademark PURE DIGITAL.

Imagination Technologies Ltd applied to register as a Community trademark the sign PURE DIGITAL for goods and services in Classes 9 and 38 of the Nice Classification (including "electric and electronic apparatus for use with multimedia entertaining systems" and "telecommunication of information"). The OHIM examiner refused the application on the grounds that the mark was descriptive and devoid of either inherent or acquired distinctive character.
The Second Board of Appeal of OHIM dismissed Imagination's appeal, as did the Court of First Instance (CFI). Imagination appealed to the ECJ, maintaining that the CFI had wrongly taken the view that the distinctive character of a trademark for which registration is sought must be acquired before the date of filing of the application.

The ECJ dismissed the appeal, explaining that distinctive character, if not inherent, must be acquired through use before the date of the application for registration. This is apparent from the very wording of Article 7(3) of the Community Trademark Regulation (40/94) - in particular, from the use of the verbs in the past tense in the phrases "the mark has become" and "in consequence of the use which has been made of it".

The ECJ concluded that:
"[i]t was the intention of the Community legislature to grant protection as a Community trademark only to those marks whose distinctive character had been acquired through use before the date of application."
According to the court, the literal interpretation of Article 7(3) of the regulation was the only one which was compatible with the logic of the system of absolute and relative grounds for refusal. If the contrary were correct, this would lead to the unacceptable proposition that in opposition proceedings based on an earlier mark which had not yet acquired distinctive character, the opposition would succeed where the second mark already had distinctive character at the time of filing while the first had not yet acquired distinctive character through use.
Arguably, the final point is the real clincher. It is refreshing to see that the ECJ looked at the literal interpretation of the legislation.
Jeremy Phillips, IP consultant to Olswang, London

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