Relevant public will perceive '.com' mark as domain name, not as trademark

European Union

The decision of the General Court in Getty Images (US) Inc v Office for Harmonisation in the Internal Market (OHIM) (Case T-338/11, November 21 2012) has demonstrated that the fact that an applicant owns a domain name does not mean that, as a consequence, that name can be registered as a Community trademark (CTM). 

Getty Images, one of the world’s largest photo stock companies, filed an application for the registration of the word mark PHOTOS.COM as a CTM in respect of goods and services in Classes 9, 42 and 45 of the Nice Classification.

OHIM refused the application on the grounds that the mark was descriptive and devoid of distinctive character in relation to the relevant goods and services. After Getty lodged an appeal, the Second Board of Appeal confirmed the contested decision, mainly for the same reason: the mark applied for was devoid of distinctive character within the meaning of the Community Trademark Regulation (207/2009).

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

With regard to the requirement of distinctive character, Getty claimed that the Board of Appeal had disregarded the fact that the application corresponds to a domain name previously registered by Getty ('www.photos.com'). Getty argued that domain names enable the origin of the goods and services covered by a mark to be clearly identified. Therefore, Article 7(1)(b) of the regulation does not apply to marks corresponding to a domain name.

The General Court pointed out that trademarks which are devoid of any distinctive character are not to be registered. According to the court, this means that trademarks need to make possible the identification of the goods and services for which registration is sought.

The General Court held that it was appropriate to examine the word sign PHOTOS.COM as a whole. In this regard, the court noted that the addition of the element ‘.com’ to the word ‘photos’ did not render the sign distinctive as a whole. The distinctive part of a domain name is not the top-level domain, which is generic, but the second-level domain which, in the present case, was devoid of distinctive character (‘photos’). According to the court, the relevant public will immediately perceive PHOTOS.COM as a domain name for an internet site where photos can be downloaded, and not as indicating the commercial origin of the goods and services concerned. Furthermore, the fact that Getty owns the domain name ‘photos.com’ does not mean that, as a consequence of that registration, ‘photos.com’ can be registered as a trademark.

Therefore, the court concluded that the word sign PHOTOS.COM was devoid of distinctive character.

Getty argued that, through the registration and use of the domain ‘photos.com’, the mark applied for had acquired distinctive character in relation to the goods or services offered. The General Court held as follows:

"In the light of all the foregoing, it must be held that – as the Board of Appeal correctly pointed out – the evidence produced by the applicant relates almost exclusively to the use of the domain name ‘photos.com’."

"In so far as the trademark application corresponds to a domain name, the fact that internet users visit the site in which the goods and services are offered is not sufficient to establish that use has been made of that mark for the purposes of Article 7(3) of [the Community Trademark Regulation]."

Therefore, the evidence produced by Getty was not sufficient to establish that the mark applied for had acquired distinctive character through the use made of it.

The action was dismissed in its entirety.

Jasper Klopper, Klos Morel Vos & Schaap, Amsterdam

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