On the same day, the court issued a further ruling (C-542/07 P), where it commented on the requirements of the distinctive character acquired through use. The Board of Appeal of OHIM refused the application for registration of the Community trademark “PURE DIGITAL” for goods and services in classes 9 and 38, in particular for computer-based goods and services, on the ground that the mark in question was descriptive and devoid of any distinctive character within the meaning of Article 7(1)(b) and (c) CTMR, as well as it has not acquired a distinctive character through use. The Court of Justice confirmed this decision and commented that, according to the CTMR, it does not suffice if the distinctive character is acquired through use after the trademark application, as the date of filing of the application for registration determines the priority of one mark over another.
The court ruled that the exemption granted in Article 51(2) of the CTMR, which states that where the Community trademark has been registered in breach of the provisions of Article 7(1)(b) CTMR, it may nevertheless not be declared invalid, if it has after registration acquired a distinctive character through use, and cannot serve as a basis for reasoning by analogy in the interpretation of Article 7(3) CTMR. This exemption acts solely for the protection of the legitimate expectations of the trademark proprietor in respect of the trademark registration, because on the basis of those expectations, he may have made investments in the period that elapsed since registration. It cannot be claimed that such legitimate expectations in the registration of the mark exist at the time when the application for registration is filed.