In Getty Images (US) Inc v OHIM C-70/13 P, the Court of Justice of the European Union (CJEU) has upheld an EU General Court decision rejecting a Community  trade mark (CTM) application for PHOTOS.COM on the basis that the mark lacked distinctive character.

BACKGROUND

Getty Images filed a CTM application for the word mark PHOTOS.COM in Classes 9, 42 and 45 covering,  amongst other goods, computer software and licensing of images. The Office of Harmonization for the  Internal Market (OHIM) refused registration. Upholding that decision, OHIM’s Second Board of Appeal  found that the mark lacked distinctive character under Article 7(1)(b) of CTM Regulation  207/2009/EC, was descriptive under Article 7(1)(c), and had not acquired any distinctive character  in the English-speaking regions of the European Union for the purposes of Article 7(3).

Appealing to the CJEU, Getty Images argued that PHOTOS.COM had the requisite degree of distinctive  character since Getty Images had already registered two word marks identical to the word mark  PHOTOS.COM as CTMs for identical or similar goods and services. Getty Images also claimed that the  General Court had erred by not considering the mark as a whole when assessing distinctiveness.  Getty Images submitted that the mark, as a domain name, had two components and the whole was  greater than the sum of its parts, thereby making the mark distinctive. Getty Images also argued  that the General Court should have found that the mark was not descriptive within the meaning of  Article 7(1)(c). Finally, Getty Images argued that, in failing to explain why they treated this  mark differently from those already registered, OHIM and the General Court did not correctly  balance the principles of equal treatment against the need to ensure that the law was observed.

DECISION

Rejecting these arguments, the CJEU held that Getty Images could not rely upon their earlier marks  to support a distinctiveness argument since they had not sought to rely on them before the General  Court.

The fact that the General Court had assessed distinctiveness by looking at the mark PHOTOS.COM in  its entirety was evident from its judgment. Examined as a whole, the mark PHOTOS.COM reproduced the  standard structure of a domain name wherein a second-level domain name (photo) and a top level domain (com) were separated by a dot.  The components 

photos and .com were “commonplace and customary” and in the absence of any additional element to render an otherwise commonplace combination unusual or  fanciful, the mark was not distinctive. Since the General Court had not erred by finding the mark  was devoid of distinctive character under Article 7(1)(b), there was no reason to consider Article  7(1)(c).

As regards equal treatment, the CJEU stressed that OHIM had a duty to exercise its powers in  accordance with the principles of equal treatment. OHIM accepted that it had to consider decisions  regarding similar applications and determine with “special care” whether or not the application  under examination should be decided as before. The principle of equal treatment had, however, to be  consistent with observance of the law. Accordingly, an applicant could not rely on an illegal act  to secure an identical decision. Legal certainty and sound administration required the examination  of  a trade mark application to be “stringent and comprehensive” so as to prevent marks that fall  short of these requirements from being registered. Each trade mark application had to be assessed  individually and specific requirements had to be met to ensure that the mark did not fall foul of  any of the absolute grounds for refusal. All of these considerations were applicable, even where  the mark in question was identical to a mark already registered as a CTM with respect to identical  or similar goods and services.

Since the mark in question lacked distinctive character under Article 7(1)(b), the General Court  was entitled to hold that PHOTOS.COM did not qualify for registration with respect to the goods and  services detailed in the application. The principles of equal treatment and the protection of  legitimate expectations were not breached.

COMMENT

Trade mark owners wishing to register a mark as a CTM which is identical to a mark already  registered by OHIM for partly identical or similar goods or services should be advised that there  is no guarantee that the subsequent mark will be registered. Each CTM application is assessed  individually  and the successful earlier registration does not require OHIM to reach a similar decision.