Texture not registrable

Report Headline

The Court of First Instance has upheld the decision of the Board of Appeal that OHIM was right to hold that a pattern on the surface of glass was not inherently distinctive and that the applicant had not adduced sufficient evidence to support a claim that the mark applied for had acquired distinctiveness through use throughout the European Community.

The Parties

Glaverbel SA v Office for the Harmonisation of the Internal Market.

The Citation

Case T 141/06

The Tribunal

Court of First Instance (Second Chamber)

The Context

Article 7(1)(b) of the Community Trade Mark Regulation (40/94/EEC) (the "Regulation") provides that a trade mark shall not be registered if it is devoid of distinctive character. Article 7(3), however, provides that Art 7(1)(b) shall not apply in circumstances where, as a result of use made by the applicant, the trade mark applied for has become distinctive in respect of the goods or services for which registration has been requested.

The Facts

Glaverbel applied to register the following, which is a patter used by Glaverbel as surface decoration for glass, as a Community Trade Mark in respect of goods in classes 19 and 21:

The goods covered by the application were as follows:
Class 19: building glass; patterned glass; glazing; glass sheets for building; glass screens and partitions
Class 21: unworked or semi worked glass (except glass used in building); patterned glass (except glass used in building); glass sheets (except glass used in building); glass sheets for use in the manufacture of sanitary installations, showers, shower walls, shower enclosures, refrigerator shelves, glazing, double glazing, building partitions, building screens, doors, cupboard doors, furniture and kitchen cutting boards.

OHIM refused the application on the basis that the mark applied for was devoid of distinctive character. Glaverbel, who has been selling glass bearing this surface pattern in the Community since approximately 1970, submitted evidence in support of a claim that the mark had acquired distinctiveness through use in accordance with Art 7(3) of the Regulation. In particular, Glaverbel submitted evidence of the volume of sales in the Community between 1993 and 2001 and declarations from professionals in the glass sector from 10 of the 15 Member States to the effect that the pattern was distinctive of Glaverbel's goods. OHIM rejected this argument and refused the application.

On appeal by Glaverbel, the Board of Appeal upheld OHIM's decision. In relation to whether the mark had acquired distinctiveness, the Board of Appeal held that, since the specification of goods applied for as set out above included goods that would be bought by an enthusiastic DIY er, the relevant public included both professionals and consumers and that Glaverbel's evidence did not show that the mark had acquired distinctiveness amongst all of the relevant public. In addition, the Board of Appeal held that Glaverbel had not shown that the mark had acquired distinctiveness throughout the Community and so was not capable of registration.
Glaverbel appealed.

The decision

Glaverbel appealed on two points:
(i) the Board of Appeal had incorrectly determined the relevant public; and
(ii) the Board of Appeal was wrong to conclude that Glaverbel had not shown acquired distinctiveness throughout the Community.

As to the first point of the appeal, the Court held that the relevant public had to be determined by reference to the goods and/or services applied for. In the present case, at least some of the goods would be bought by consumers and so consumers must be part of the relevant public for assessing acquired distinctiveness. The Court went further than this though. It went on to say that, even if the goods in question were as a matter of fact only sold to professionals, because the selection of the goods would be in part based on the visual appearance of the goods and so may well be chosen by the end consumer even if the end consumer did not enter into the contract of sale.

As to the second point of the appeal Glaverbel had produced statements from professionals in 10 of the 15 Member States and those 10 Member States accounted for over 90% of the population of the Community. Accordingly, argued Glaverbel, it had shown evidence of distinctiveness throughout the Community, especially when taken together with the evidence of sales of goods throughout the Community.

The Court rejected these arguments. The Court held that, since the mark was non word mark and would therefore be considered equally in all Member States Glaverbel would need to show that it had acquired distinctiveness in each of the Member States. Although sales figures could be useful as evidence to support direct evidence of acquired distinctiveness (such as a statement from a professional), sales figures alone would not be sufficient. Therefore, in the 5 Member States where Glaverbel had not provided a statement from a professional, it had failed to show that the mark had acquired distinctiveness. Since those 5 Member States were a significant part of the Community, the application must be refused and the decision of the Board of Appeal upheld.

Comment

The Court's findings in relation to the determination of the relevant public are interesting, but perhaps not that surprising – the mark formed part of the aesthetic quality of goods that would be purchased by or at the direction of consumers and so consumers should be part of the relevant public for the purposes of assessing acquired distinctiveness. The Court did not need to consider whether those consumers would have perceived the pattern as operating as a trade mark and, given the findings that sales figures alone may not be sufficient to show that a mark has acquired distinctiveness, it is an interesting question what would be sufficient evidence in this regard.

Furthermore, taken together with the finding that applicants must show acquired distinctiveness in all of the Member States, it now seems that an application for a Community Trade Mark based on acquired distinctiveness through use would require the applicant, even with evidence of a large volume of sales throughout the Community, to produce either statements from customers (professional or otherwise) or some other type of direct evidence (presumably survey type evidence) from each Member. It is easy to see how this could be too high a hurdle for some applicants to overcome.