The judgment in the case of T‑411/14 by the General Court of the EU upheld the original decision by OHIM that the trade mark below lacks any distinctive character.

Of particular note is the Court’s finding that survey evidence submitted by Coca-Cola did not prove that the mark had acquired distinctive character throughout the EU.

Distinctive character and acquired distinctiveness

Article 7(1)(b) of the Community Trade Mark Regulation 2007/2009 (CTMR) provides that a mark may not be registered if it is devoid of any distinctive character. Nevertheless, in accordance with Article 7(3) CTMR, a mark that would otherwise be refused as lacking distinctive character can be registered where the mark has become distinctive in relation to the goods or services for which registration is requested in consequence of the use which has been made of it.

In order to take advantage of Article 7(3) CTMR, it is necessary to show that a mark had acquired distinctiveness before the application to register the mark is filed. Furthermore, at least in the case of non-word marks, it is necessary to show that the mark had acquired distinctiveness throughout the EU.

Survey and other evidence

In an effort to show that their 3D bottle mark had acquired distinctiveness, Coca-Cola submitted survey evidence. However, the surveys had been carried out in only 10 of the 27 Member States of the EU at the time the application was filed in 2011.  Whilst the Court found that surveys established that the mark had acquired distinctiveness in those 10 Member States, it held that the results of those surveys could not be extrapolated to the other 17 Member States in which no survey was carried out and, therefore, were not sufficient to prove that the mark had acquired distinctiveness throughout the EU.

Coca-Cola also submitted evidence regarding advertising and communication in promoting the mark. The Court accepted that the amount invested by an undertaking in promoting a mark may be taken into account for the purposes of considering whether a mark has acquired distinctive character but found that the evidence provided by Coca-Cola did not specifically relate to the mark applied for and so could not be taken into account.

The case highlights the difficultly that applicants face in trying to establish acquired distinctiveness of a trade mark, particularly for non-word marks.  The following points should be noted for applicants who are relying on acquired distinctiveness:

• Comprehensive surveys and other research should be conducted before filing an application with a view to demonstrating that distinctive character as been acquired throughout the EU.
• Evidence relating to advertising or sales should be specific to the mark in question.

The full decision of the General Court can be found: here

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