A recent decision in the Intellectual Property Enterprise Court (IPEC) (Mermeren Kombinat AD v Fox Marble Holdings PLC) has confirmed the key principles when reviewing both geographical origin and acquired distinctiveness.
The claimant, Mermeren, was a Macedonian company which since the 1950s had been extracting marble from the Prilep region of Macedonia close to a mountain pass called Sivec (pronounced Sivets). Mermeren obtained registration for a EU trade mark for SIVEC for "marble of all types". Fox Marble (a UK company) started selling marble under a SIVEC mark and Mermeren subsequently issued trade mark infringement proceedings in IPEC. In its defence, Fox Marble responded that it had not infringed a validly registered mark. It argued that the SIVEC mark was devoid of distinctive character, and therefore failed inherent registrability tests, as it simply designated the geographical origin of the goods in question.
In response to this counter claim for invalidation of the SIVEC mark, Mermeren stated that to any extent the mark was devoid of distinctive character, it had acquired distinctive character through use.
The first question that the court had to consider was whether the average consumer considered that the SIVEC mark designated the geographical origin of the marble goods in question i.e. what was the inherent character of the mark?
The court confirmed that in assessing inherent character, the use of the mark should be disregarded (at this stage of the assessment).
The average consumer in this case was identified as "a specialist dealer in marble or a person who advises their customers on the choice of materials to be used in a building, such as an architect or designer of interiors". The average consumer needed to come from the EU so this excluded Macedonia.
The court acknowledged that SIVEC was the name of a geographical location but was so obscure that only those living near to the mountain pass are likely to have heard of it.
It was held that if the average consumer has never heard of a place, it therefore cannot designate a geographical origin and as such, is inherently distinctive.
It is worth noting that even if the mark had been held to be invalid, Mermeren was able to prove that its mark had acquired distinctiveness as at the date of the filing of the application for registration of the SIVEC trade mark.
HHJ Hacon provided a useful summary of the recent law relating to acquired distinctiveness and particularly the relevant perception of the average consumer. This included confirming that:
- Whether a trade mark has acquired distinctive character will depend upon whether a significant proportion of the average consumers perceived that trade mark as identifying the relevant goods or services as originating from a single undertaking as at the date of filing of the application (a significant proportion being more than de minimis but "may be less than half);
- Perception is to be distinguished from recognition or association, the latter two being insufficient to confer distinctive character on a mark;
- The perception of the average consumer must arise from the use of a mark as a trade mark (i.e. use in the course of trade);
- When assessing distinctive character the court may take into account a variety of factors including market share, period and intensity of use of the mark, the amount invested in a mark and statements from industry bodies;
- The court can use public surveys if it is having difficulty assessing distinctiveness;
- The court can consider whether the relevant public has relied on a mark in denoting origin but this is not a pre-condition for establishing distinctive character (although if established will be enough to show this);
- If a trade mark consists of a geographical name that is very well known, only long standing and intensive use will lead to acquired distinctive character and that distinctive character must be established in the area of the EU where the mark initially had descriptive character.
In light of the above and after considering the available evidence, HHJ Hacon concluded that a significant proportion of the relevant public perceived the mark to indicate goods originating from Mermeren. The counterclaim for invalidity therefore failed and Fox Marble was found to have infringed the SIVEC mark.
The Mermeren decision provides a useful reminder of the key issues to consider when assessing both geographical origins and acquired distinctiveness.