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April 26, 2016

Message in a Bottle

EU’s General Court clarifies threshold for evidencing acquired distinctiveness

Coca-Cola sought to register the 3-D sign for the contour of a bottle shown to the right as a European Union Trademark, but the application was rejected on the grounds that the mark lacked distinctive character. A trademark may be registered even if it lacks distinctive character, if the applicant can demonstrate that the mark has acquired distinctiveness through use. Coca-Cola submitted evidence in the form of surveys from 10 member states showing that the mark had acquired distinctive character.

However, the General Court dismissed the evidence on the following grounds: "As regards the surveys relied on by the applicant, it must be held that the Board of Appeal was correct to find that those surveys were not capable of proving that the mark applied for had acquired distinctive character throughout the European Union in respect of a significant part of the relevant public. The surveys were conducted in 10 EU Member States, namely Denmark, Germany, Estonia, Greece, Spain, France, Italy, Poland, Portugal and the United Kingdom, even though the European Union had 27 Member States at the date on which the application for registration was lodged.

It is true that the surveys in question concluded that the mark applied for had acquired a distinctive character in the 10 Member States where they were carried out, however, they did not establish that that was also the case in the other 17 Member States. The results of those surveys cannot be extrapolated to the 17 Member States in which no surveys were conducted."

This decision goes to show that where an application for a European Union Trademark is met with a distinctiveness objection, and where the applicants try to overcome such objection by evidencing acquired distinctiveness through use, the evidence must relate to all 28 member states of the European Union – a heavy and expensive task indeed.

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