In a recent trade mark infringement case, the Intellectual Property Enterprise Court (IPEC) considered whether a trade mark lacked inherent distinctiveness because of the possibility it could be understood by the public as referring to the geographical origin of the goods in question.
The infringement case
Mermeren Kombinat, a Macedonian company, is the owner of an EU trade mark for the word ‘Sivec’ which is registered in respect of ‘marble of all types’ and other related goods. Mermeren initiated proceedings against a UK company, Fox Marble, for infringement of the mark. Fox also extracts and sells marble, selling one particular type of marble that it extracts from a quarry in Macedonia, under the sign ‘Sivec’.
Fox asserted that the trade mark ‘Sivec’ was invalidly registered and should be revoked. Sivec is a small village near the quarrying site in Macedonia and as such, Fox claimed that the trade mark indicated the geographical origin of the marble in respect of which the mark was used by Fox.
The Court found that although Sivec was indeed a real place in Macedonia, it was very obscure and unknown to the average consumer of marble in the EU. As a result, the Court held the mark did not inherently designate the geographical origin of a type of marble. Fox had failed in its counterclaim that the mark was invalid for lack of distinctiveness.
The Court went on to state, that if it had been the case that the mark did designate a geographical origin, this position had been reversed through its use. By the time Mermeren filed the trade mark application in 2010, a significant proportion of the relevant persons had come to believe that ‘Sivec’ was a trade mark owned by Mermeren and would have perceived the mark as designating marble from that particular undertaking.
Implications for the ruling
The case serves as a reminder that where there is a risk of a trade mark application being refused due to its lack of distinctive character or because it consists exclusively of signs which may designate the kind, quality, quantity or other characteristics of the goods or services; these objections may be overcome if you can demonstrate that the mark has become distinctive of the goods or services.
To be successful, you will need to present sufficient evidence to demonstrate that the average consumer of your goods and services has come to associate the mark you are seeking to protect with your business. In addition, you must demonstrate that this association has arisen as a direct consequence of the use of the mark as a trade mark.
Protecting your brand is an important part of your business. Whatever the nature of your business we can help protect and enforce your intellectual property rights. Visit our intellectual property for businesses page to find out more.