Case T‑304/16

bet365 Group Ltd

v

European Union Intellectual Property Office

(EU trade mark — Invalidity proceedings — EU word mark BET 365 — Absolute ground for refusal — Distinctive character acquired through use — Proof — Use of the mark for a number of purposes — Article 7(3) and Article 52(2) of Regulation No 207/2009 (now Article 7(3) and Article 59(2) of Regulation (EU) 2017/1001))

Summary — Judgment of the General Court (Ninth Chamber), 14 December 2017

EU trade mark — Definition and acquisition of the EU trade mark — Absolute grounds for refusal — Marks devoid of any distinctive character — Exception — Distinctive character acquired through use — Mark devoid of distinctive character in part of the Union — Acquisition of distinctive character in that same part — Extrapolation of the acquisition of distinctive character through use in certain Member States to other Member States

Under Article 52(2) of Regulation No 207/2009 on the EU trade mark, a mark that is in itself descriptive and not distinctive which has been registered in breach of Article 7 of Regulation No 207/2009 may nevertheless not be declared invalid if, in consequence of the use which has been made of it, it has acquired, after registration, distinctive character in relation to the goods or services for which it is registered. As was, in essence, stated in the judgment of 28 September 2016, European Food v EUIPO — Société des produits Nestlé (FITNESS), T‑476/15, the invalidity proceedings based on absolute grounds for refusal provided for in Article 52 of Regulation No 207/2009 directly refer to the absolute grounds for refusal set out in Article 7 of that regulation, and to the exception of the acquisition of distinctive character through use which moderates them, the only potential substantive difference between the two procedures being the time at which the acquisition of such distinctive character must be assessed. In that regard, in the judgment of 15 December 2016, Mondelez UK Holdings & Services v EUIPO — Société des produits Nestlé (Shape of a chocolate bar), T‑112/13, the Court confirmed that, in invalidity proceedings based on absolute grounds for refusal, the proprietor of the contested mark was entitled either to prove that it had acquired distinctive character owing to the use that had been made of it before its registration or that it had acquired such character between its registration and the date of the request for a declaration of invalidity. (see para. 23)

As regards the territory in which distinctive character acquired through use must be established in order for the exceptions referred to in Article 7(3) and Article 52(2) of Regulation No 207/2009 on the EU trade mark to apply, it should be noted that, in accordance with Article 1(2) of that regulation (now Article 1(2) of Regulation 2017/1001), the EU trade mark is to have a unitary character, which implies that it must have equal effect throughout the European Union. It follows from the unitary character of the EU trade mark that, in order to be accepted for registration, a sign must have distinctive character throughout the European Union. Therefore, under Article 7(2) of Regulation No 207/2009 (now Article 7(2) of Regulation 2017/1001), a mark must not be registered if it lacks distinctive character in part of the European Union. Consequently, it is necessary to establish the acquisition of distinctive character through use in the whole of the territory in which the mark did not, ab initio, have such character; that territory may be comprised of a single Member State. It has, however, been held that it would be unreasonable to require proof of acquisition of distinctive character through use with regard to each individual Member State concerned. In that regard, the extrapolation of the acquisition of distinctive character through use in certain Member States to other Member States cannot be ruled out, in so far as objective and credible factors permit the view that those markets are comparable in so far as concerns the perception of the contested mark by the relevant public. (see para. 26)

Recognition that a mark has acquired distinctive character through use requires that at least a significant proportion of the relevant public, by virtue of that mark, identifies the goods or services concerned as originating from a particular undertaking. However, the circumstances in which the condition concerning the acquisition of distinctiveness through use may be regarded as satisfied cannot be established solely on the basis of general, abstract data. Account must be taken of factors such as the market share held by the mark, how intensive, geographically widespread and long-standing use of the mark has been, the amount invested by the undertaking in promoting the mark, the proportion of interested parties who identify the product as originating from a particular undertaking because of the mark, statements from chambers of commerce and industry or other trade and professional associations. It must also be noted that, according to case-law, the distinctive character of a mark, including that acquired through use, must also be assessed with regard to the goods or services in respect of which registration is applied for or obtained and in the light of the presumed perception of the mark by an average consumer of the category of goods or services in question, who is reasonably well informed and reasonably observant and circumspect. It is also apparent from the case-law that proof of distinctive character acquired through use cannot be furnished by isolated data such as the mere production of sales volumes in respect of the goods or services concerned and advertising material. Likewise, the mere fact that the sign has been used in the European Union for some time is also not sufficient to show that the public targeted by the goods or services in question perceives it as an indication of commercial origin. In that regard, the acquisition of distinctive character through use must be shown by ‘use of the mark as a trade mark’, that is to say the use of the mark for the purposes of the identification by the relevant class of persons of the goods or services covered by the mark as originating from a given undertaking. (see paras 27-30)

See the text of the decision. (see paras 31-77)

The acquisition, by a mark, of distinctive character through use does not necessarily mean that it has been the subject of independent use, but may result from its use as part of another registered mark or from its use in conjunction with another registered mark, provided that, in both cases, the use made leads the relevant class of persons to perceive that the goods or services designated exclusively by the mark under examination originate from a given undertaking which uses it as part of another mark or in conjunction with another mark. (see para. 39)

The use of a mark as the name of a website could constitute use of the mark as a trade mark. Everything depends on the documents and information submitted in that regard and what they might provide in order to assess the relevant public’s perception when it sees or uses the mark in the course of its use of the internet. Thus, information such as the number of connections to the proprietor’s website, that website’s ranking in terms of the number of visits in various countries or the number of times the contested mark or its derived marks were the subject of a search using internet search engines can help to show that the contested mark has acquired distinctive character through use. The same may be true of extracts of pages from the proprietor’s website or other websites, in various languages, on which the contested mark or its derived marks appear, provided that the scope of the evidence adduced can illustrate significant use of the contested mark as a mark. (see paras 43, 46)