In Getty Images (US) Inc. v OHIM  T-338/11, the EU General Court has upheld a decision of the Board of Appeal of the Office of Harmonization for the Internal Market (OHIM), rejecting a Community trade mark application for the word mark PHOTOS.COM. The General Court found that it lacked distinctive character and had not acquired distinctiveness through use.
Getty filed a CTM application for the word mark PHOTOS.COM in Classes 9, 42 and 45, broadly covering computer software, related goods and services and licensing of images and footage. OHIM refused the application, finding that the mark was descriptive and lacked distinctive character. The OHIM Board of Appeal dismissed Getty’s appeal, holding that the mark had not acquired distinctiveness. Getty appealed to the General Court, arguing, inter alia, that the Board of Appeal had disregarded the fact that the CTM application corresponded to the domain name registered previously by Getty. Getty contended that domain names, which are exclusive, enable the origin of goods and services covered by a trade mark to be identified clearly.
The General Court agreed with the Board of Appeal that the relevant public was made up of professionals and the general public. In addition, it also agreed that the sign PHOTOS.COM was intelligible in both English and French and would also be understood in other languages of the European Union. The vast majority of inhabitants of the European Union would, therefore, understand its meaning.
The General Court found that PHOTOS.COM was devoid of distinctive character as it reproduced the characteristic structure of a domain name and would be perceived as such by the relevant public. The word “photo” immediately informed the relevant public that the goods and services covered by the application were related to photography. The element “.com”, which referred to a generic top level domain, would be perceived immediately as referring to an internet site. Accordingly, the sign PHOTOS.COM was made up of a combination of technical elements incapable of distinguishing Getty’s goods and services from those of other undertakings. The sign did not include any additional elements to support the conclusion that the combination created by the commonplace and customary components “photos” and “.com” was unusual, fanciful or might have its own meaning. In light of the lack of distinctiveness of the individual components of the sign, the relevant public would immediately perceive the sign applied for as a domain name for an internet site where photos could be downloaded, and as a source of information for goods related to photography, rather than as an indicator of commercial origin.
The General Court noted there was a clear distinction between rights derived from a domain name registration and rights derived from a CTM registration. The mere fact that Getty owned the domain name “photos.com” did not mean the name could be registered as a CTM; not all the conditions for registrability had been satisfied.
The General Court found that Getty had failed to establish that the sign had acquired distinctiveness through use. The evidence produced by Getty related almost exclusively to use of the domain name “photos.com”. This did not illustrate use of the sign PHOTOS.COM as a trade mark. For example, the fact that photos.com was recommended on discussion fora, blogs and specialist sites, by subscribers in Denmark, Finland, Sweden and the United Kingdom as offering quality photographs, was not sufficient to establish a link between the sign PHOTOS.COM and all the goods and services covered by the application. Evidence of photos which, according to Getty, came from the photos.com website and were published in press articles on-line or in independent newspapers, were also insufficient to enable the commercial origin of the goods and services to be identified. Evidence that internet users from all over the world visited the www.photos.com website on which the goods and services were offered was inadequate to establish acquired distinctiveness through use.
Businesses frequently struggle to obtain trade mark registrations for domain names consisting of commonplace terms, owing to objections on the grounds of lack of distinctiveness. Proving that the mark applied for has acquired distinctiveness through use is difficult, in particular in relation to the European Union, where such evidence has to be presented for a multitude of countries. Ownership of a domain name, despite conferring exclusive rights on the registrant, is irrelevant. Evidence must document use of the mark applied for in relation to all goods and services covered by the application, and show in detail the intensity, frequency and duration of use of the mark to establish that a significant proportion of the relevant public are able to identify all these goods and services as originating from one particular undertaking.