Rules on acquired distinctiveness explained by ECJ

In Bovemij Verzekeringen NV v Benelux-Merkenbureau, the European Court of Justice (ECJ) has issued a decision concerning the interpretation of Article 3(3) of the First Trademark Directive.

The case related to a Benelux trademark application filed by Dutch insurance company Bovemij Verzekeringen NV for the word mark EUROPOLIS in Classes 36 and 39 of the Nice Classification. The Benelux Trademark Office refused registration on the grounds that EUROPOLIS lacked distinctiveness as the term 'Euro' referred to Europe and 'polis' is the Dutch term for an insurance policy. After an unsuccessful appeal, Bovemij filed an appeal with the Gerechtshof Den Haag arguing that EUROPOLIS is inherently registrable and that, in any event, the mark had acquired distinctiveness as it had used the mark since 1988. The main issue was the question as to whether acquired distinctiveness had to relate to the whole territory of the Benelux countries or whether acquired distinctiveness in Holland alone, for example, was sufficient. The Gerechtshof Den Haag transferred the case to the ECJ and raised questions concerning the interpretation of Article 3(3) of the directive, which provides that marks that are normally excluded from registration pursuant to Articles 3(1)(b), (c) and (d) can be registered if they have acquired distinctiveness.

The ECJ first held that the Benelux countries are treated as one unitary territory under the Benelux Trademark Act, therefore, the registration of a trademark can be allowed on the basis of that provision only if it is proven that that trademark has acquired distinctive character through use throughout the territory of the member state or, in the case of Benelux, throughout the part of the territory of Benelux in which there exists a ground for refusal.

The Gerechtshof Den Haag then raised an additional question as to whether different languages and therefore different understandings also have to be taken into account. 'Polis' only has a descriptive meaning in Dutch and would not be understood as a descriptive term in French-speaking parts of the Benelux countries. The ECJ stated that an absolute ground for refusal only exists in Dutch-speaking parts of Benelux, meaning that the exception in Article 3(3) of the directive allowing the registration of marks which have acquired distinctiveness only applies to the Dutch-speaking part of Benelux. Hence, even though the acquired distinctiveness should be shown in the whole territory of Benelux, the applicant solely had to prove that its mark had acquired distinctiveness in those areas where the term is considered as descriptive, (ie, Dutch-speaking areas of the Benelux countries). In other areas, the reason for the refusal would not exist and the applicant would have no need for the exception in Article 3(3).

Carsten Albrecht, Lovells, Hamburg