The Claimant, Mermeren, is a Macedonian company which has been extracting marble in the Macedonian village Sivec since 1950. It is also the owner of an EU Trade Mark for the word ‘SIVEC’ registered in relation to marble.

Initially, Mermeren brought registered trade mark infringement proceedings in the UK against Fox which had used the identical mark ‘Sivec’ for goods identical to those protected by the Claimant’s mark, i.e. marble. Fox counterclaimed and sought a declaration that the mark was invalid for lack of distinctiveness. Fox’s argument was that the name Sivec, as the name of the Macedonian village, designates the marble’s geographical origin and therefore lacks distinctiveness.

IPEC considered that the registration of geographical names as trade marks is allowed if there is an association in the mind of the relevant public between the place in question and the goods concerned. In assessing whether a mark which bears the name of a geographical place has acquired distinctiveness under Art. 7(3) of the Trade Marks Directive, the Court will consider how intensive and wide-spread the use of the mark has been, the market share held by the mark and the proportion of class of persons who, because of the mark and the use made of it, identify goods as originating from a particular undertaking. If this proportion of persons is significant, then the mark will have acquired distinctiveness. For the purposes of assessing this distinctive character of a mark, the view of the average consumer, one that is reasonably well-informed, observant and circumspect, is relevant.

The Court concluded that the decisive factor in establishing acquired distinctiveness was whether the relevant proportion of the public identified the marble as coming from the Claimant as a result of the use of ‘Sivec’ as a trade mark rather than as a name designating geographical origin. If the average consumer simply recognised the mark and associated it with the Claimant’s marble, then this in itself would be insufficient. Such perception must have arisen in consequence of the use of ‘Sivec’ as a trade mark.

In relation to the place, IPEC found that people who do not live in close proximity of Sivec will not have heard of it. Therefore, people who live in the EU and purchase marble and who constitute the relevant class of persons for the purposes of the test of acquired distinctiveness will not have known of the existence of Sivec the place.

IPEC nonetheless accepted that even if the average consumer had never heard of Sivec the place, it was possible that the use of the name of this place in association with marble could lead to a general assumption that the name designated the marble’s origin. However, substantial evidence of Mermeren’s promotions of the mark ‘Sivec’ in brochures and at prominent trade shows in the EU and China, particularly from 2010 onwards, showed that a significant portion of the relevant public had come to believe that Sivec was a trade mark owned by the Claimant. Therefore, the trade mark ‘Sivec’ had acquired distinctiveness within the meaning of Art. 7(3) of the Trade Marks Directive, so there were no grounds for its revocation and it remained valid. Fox was left without a defence to Mermeren’s infringement claim against it.

[2017 ] EWHC 1408 (IPEC)