A recent decision in the Intellectual Property Enterprise Court (IPEC) (Mermeren Kombinat AD v Fox Marble Holdings PLC) has confirmed the key principles when reviewing both geographical origin and acquired distinctiveness.
The claimant, Mermeren, was a Macedonian company which since the 1950s had been extracting marble from the Prilep region of Macedonia close to a mountain pass called Sivec (pronounced Sivets). Mermeren obtained registration for a EU trade mark for SIVEC for "marble of all types". Fox Marble (a UK company) started selling marble under a SIVEC mark and Mermeren subsequently issued trade mark infringement proceedings in IPEC. In its defence, Fox Marble responded that it had not infringed a validly registered mark. It argued that the SIVEC mark was devoid of distinctive character, and therefore failed inherent registrability tests, as it simply designated the geographical origin of the goods in question.
In response to this counter claim for invalidation of the SIVEC mark, Mermeren stated that to any extent the mark was devoid of distinctive character, it had acquired distinctive character through use.
The first question that the court had to consider was whether the average consumer considered that the SIVEC mark designated the geographical origin of the marble goods in question i.e. what was the inherent character of the mark?
The court confirmed that in assessing inherent character, the use of the mark should be disregarded (at this stage of the assessment).
The average consumer in this case was identified as "a specialist dealer in marble or a person who advises their customers on the choice of materials to be used in a building, such as an architect or designer of interiors". The average consumer needed to come from the EU so this excluded Macedonia.
The court acknowledged that SIVEC was the name of a geographical location but was so obscure that only those living near to the mountain pass are likely to have heard of it.
It was held that if the average consumer has never heard of a place, it therefore cannot designate a geographical origin and as such, is inherently distinctive.
It is worth noting that even if the mark had been held to be invalid, Mermeren was able to prove that its mark had acquired distinctiveness as at the date of the filing of the application for registration of the SIVEC trade mark.
HHJ Hacon provided a useful summary of the recent law relating to acquired distinctiveness and particularly the relevant perception of the average consumer. This included confirming that:
In light of the above and after considering the available evidence, HHJ Hacon concluded that a significant proportion of the relevant public perceived the mark to indicate goods originating from Mermeren. The counterclaim for invalidity therefore failed and Fox Marble was found to have infringed the SIVEC mark.
The Mermeren decision provides a useful reminder of the key issues to consider when assessing both geographical origins and acquired distinctiveness.
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