7 September 2018Trademarks

CJEU clarifies distinctive trademark use requirements

The Court of Justice of the European Union (CJEU) has dismissed an Italian branding company’s trademark appeal, finding that proof of distinctive character in four member states of the EU is not sufficient to ensure a mark’s registration.

The Eighth Chamber of the court delivered judgment yesterday, September 6.

In 2014, Basic Net applied to register a figurative mark featuring three vertical stripes of colours, yellow, orange, and navy blue, at the European Union Intellectual Property Office (EUIPO) in classes 18, 25, and 26, covering leather goods, clothing, and hair accessories.

In 2014, the EUIPO refused registration of the applied-for mark, and the First Board of Appeal upheld this determination as the mark lacked distinctive character.

Basic Net sought to have the EUIPO’s decision annulled but, in July 2017, the EU General Court sided with the EUIPO.

At the General Court, the branding company claimed that the mark had acquired distinctive character through use in many European countries.

However, the court said that a sworn declaration, which revealed sales data for products marketed under the disputed mark, must be corroborated by other evidence.

The General Court agreed that the applied-for mark had acquired distinctive character in four member states (France, Italy, the UK, and the Netherlands), but Basic Net’s evidence was insufficient to prove that the mark had acquired distinctive character in the other eight states claimed.

It upheld the EUIPO’s decision that registration of the mark should be denied.

On appeal, Basic Net asked the CJEU to annul the General Court’s judgment and order the EUIPO to pay its costs.

Basic Net said that the population of the four states in which distinctive character had been acquired equates to 40% of the total EU population, and reputation of distinctive character in such a significant part of the EU is sufficient to enable registration of that mark.

The branding company added that the General Court failed to state its reasons for not considering 40% a signification proportion of the relevant public.

Yesterday, the CJEU held that evidence of distinctive character through a mark’s use in the four above-mentioned member states is not sufficient to ensure that mark’s registration.

Trademark applicants should produce evidence of distinctive character through a mark’s use in each member state, the CJEU said, even though these four member states represent a significant portion of the population of the EU.

The CJEU noted that, at the EUIPO and General Court, Basic Net had presented claims of distinctive character and reputation in other member states but did not produce sufficient evidence to support these claims.

As the General Court stated the grounds for determining that the mark’s acquisition of distinctive character in these member states had not been proven, it did not breach its obligation to state reasons, the CJEU said.

Basic Net also argued that the decisions of the EUIPO and the General Court failed to consider other colour-combination marks which have been registered.

This argument was “reproduced” from claims Basic Net made at the General Court, the CJEU said. In the absence of a specific legal argument, the CJEU found this to be inadmissible.

The CJEU dismissed the branding company’s appeal and ordered it to pay the costs incurred by the EUIPO.

Did you enjoy reading this story?  Sign up to our free daily newsletters and get stories like this sent straight to your inbox.

Today's top stories

Apple’s ‘Banana’ TM oppositions lapse

UKIPO puts a lid on tea trademark dispute

USPTO to introduce ‘safer’ login

Wright, Johnston & Mackenzie promotes IP tech lawyer to partner

Already registered?

Login to your account

To request a FREE 2-week trial subscription, please signup.
NOTE - this can take up to 48hrs to be approved.

Two Weeks Free Trial

For multi-user price options, or to check if your company has an existing subscription that we can add you to for FREE, please email Adrian Tapping at