In New Look Ltd v Office for Harmonization in the Internal Market (OHIM) [2008] T-435/07 (unreported), the Court of First Instance (CFI) made it clear that, in order for a mark lacking distinctive character to be registrable on the basis of acquired distinctiveness under Article 7(3) of the Community Trade Mark Regulation (40/94/EC), an applicant must demonstrate that the mark has acquired distinctive character through use in the whole Community and not just the substantial part in which it was found to lack inherent distinctiveness.

BACKGROUND

In 2002, New Look, the high street clothing retailer, filed a Community Trade Mark (CTM) application for the word mark NEW LOOK for goods and services in Classes 3, 4, 9, 11, 14, 16, 18, 20, 25, 26, 28, 35 and 36, including cosmetics, sunglasses, jewellery, articles of clothing, stationery, articles made of leather and so on, all of which were targeted at the general public.

In 2004, the OHIM examiner informed New Look that the mark was not registrable for some of the goods listed on the application on the basis that it lacked distinctive character and consisted exclusively of an indication that may serve to designate the characteristics of goods, contrary to Article 7(1)(b) and (c) of the Regulation respectively. The Classes under which registration was refused were 3, 9, 14, 18, 20, 25 and 26.

New Look subsequently submitted evidence of use of the mark to demonstrate that it had acquired distinctiveness within the Community. However, in 2006 the examiner upheld her objection on the basis that such evidence did not demonstrate sufficiently the acquired distinctive character of the mark. In addition, the examiner widened the objection to registration to include additional goods and services under Classes 16, 18 and 35.

In December 2006, New Look applied to register a declaration of division of its application in order to obtain registration in respect of those goods and services that were not objected to by the examiner. Unfortunately for New Look, the examiner refused the new application in its entirety on the same basis as before.

OHIM’s Second Board of Appeal upheld that decision. The Board held that the mark was devoid of distinctiveness and that the evidence filed by New Look was not sufficient to show that the sign had acquired distinctive character through use in the minds of the general consumer public. The Board took the view that the relevant public included those consumers of the category of goods in question within the Community who were native English speakers and also those who understood basic English. Thus, the relevant public in these circumstances included the general public of Cyprus, Finland, Ireland, Malta, the Netherlands, the Scandinavian countries, the United Kingdom and “all places where fashion is an important commercial activity”.

COURT OF FIRST INSTANCE

New Look then appealed to the CFI on the ground that the Board of Appeal, in requiring it to adduce evidence that the mark applied for had acquired distinctive character in Member States other than the United Kingdom and Ireland, had infringed Article 7(3). It contended that, according to current case law, it need only show evidence of use in the substantial part of the Community in which the mark was devoid of any distinctive character under Article 7(1)(b). New Look also asserted that, where a mark is a word sign in English, it can only be devoid of distinctive character in the United Kingdom and Ireland, given that English is the native language in only those two Member States.

Rejecting the appeal, the CFI stated that a mark must be refused registration if it is devoid of distinctive character in part of the Community. In addition, if a mark is to be registered, it must have distinctive character throughout the Community and not just a substantial part of it.

The CFI noted that the mark was an expression that was common in the English language and would therefore be understood to mean “new appearance” by the public who are native English speakers as well as those with just a basic level of English. It followed that a mark which consists of a combination of English words which is grammatically correct will be understood not only by the English speaking public but also by the public that has sufficient knowledge of English.

In addition, the CFI commented that “at the very least”, a basic level of English could be attributed to Finland, the Netherlands and the Scandinavian countries. The Board of Appeal was therefore correct in taking the view that the target public in those countries would understand the mark.

The CFI also stated that the public in those countries would not attribute the mark to a “particular trade origin for the goods and services” but rather, they would understand it to mean “a claim about a product or the change that product could confer on a person’s appearance”. Consequently, the Board of Appeal found correctly that the mark was devoid of distinctive character in those countries.

The CFI did disagree with the Board of Appeal’s finding that the relevant public included the general public in “all places where fashion is an important commercial activity”. Labelling this term “vague”, the CFI stated that it was incorrect to assume that the general public in the fashion centres of the Community would understand the expression “new look”. Additionally, it found that since the Board’s finding was not based on any evidence, New Look’s claim that those places were wrongly taken into account was acceptable.

Finally, the CFI decided that, contrary to what New Look claimed, it is not a complex procedure to establish the level of command of English required in order to understand the mark. As New Look had failed to adduce evidence of use of the mark in Finland, the Scandinavian countries and the Netherlands, it had failed to prove that the mark had acquired distinctive character through use throughout a relevant part of the Community.

The CFI therefore dismissed the appeal in its entirety.

COMMENT

In light of this judgment, an applicant seeking to register a CTM consisting of English words devoid of any inherent distinctive character must show that the mark has acquired distinctive character in relevant non-English speaking Member States as well as the United Kingdom and Ireland.