Delay could pay
Rose Smalley recommends a strategic slowdown when it comes to showing evidence. T-704/16, Murka Ltd v EUIPO (SCATTER SLOTS), General Court, 17th October 2017.
T-704/16, Murka Ltd v EUIPO (SCATTER SLOTS), General Court, 17th October 2017
Key points
- Where an EUTM applicant seeks to register a descriptive or non-distinctive mark, it may be prudent to delay the application (where possible) in order to collate sufficient pre-filing evidence of acquired distinctiveness
- Evidence should focus on and clearly quantify all relevant information
In this case, the General Court (GC) upheld a Board of Appeal decision in respect of SCATTER SLOTS, an EU trade mark (EUTM) application filed by Murka Ltd in class 41 for goods and services including betting services, casinos and electronic games services. The GC held that SCATTER SLOTS was:
- descriptive of the services in question under Article 7(1)(c) of Council Regulation (EC) No 207/2009;
- devoid of distinctive character under Article 7(1)(b); and
- ineligible for acquired distinctiveness through use under Article 7(3).
Invention over description
Referencing OHIM v Wrigley , the GC found that if at least one possible meaning of a mark is descriptive it must be refused registration under Article 7(1)(c). This must be assessed by reference to the relevant public’s perception of that mark and the goods/services concerned. In relation to betting services, the GC held that SCATTER SLOTS clearly and unequivocally meant “services connected with gambling machines characterised by the ‘scatter’ function” in the mind of the relevant public.
This decision illustrates the worth of invented words that are devoid of any inherent meaning and wholly distinctive, eg Opodo and Kodak. Failing that, EUTM applicants should incorporate words that are unrelated to and distinct from the relevant services provided in order to avoid refusal under Article 7(1)(c).
The GC also reaffirmed that, as an absolute ground for refusal under Article 7(1)(c) applied, it was unnecessary to rule on the second plea relating to distinctive character under Article 7(1)(b).
Evidence is key
The GC made a number of observations in relation to evidencing acquired distinctiveness.
First, it observed that regard should be had to the trustworthiness of affidavit evidence. The GC held that evidence from third parties or unconnected persons will carry more credibility and reliability than evidence from an applicant’s director, who will naturally have a vested interest in the outcome.
Second, only evidence that predates the filing date of the relevant mark will be taken into consideration.
Further, the GC re-emphasised the evidential requirements for acquired distinctiveness as reported in BIC v OHIM – namely, evidence must substantiate:
- the market share held by the mark;
- the amount invested in promoting the mark;
- how intensive, geographically widespread and long-standing the use of the mark had been;
- the proportion of the public identifying the goods as originating from a particular undertaking; and
- statements from chambers of commerce, industry, trade or other professional associations.
Accordingly, where an EUTM applicant seeks to register a descriptive or non-distinctive mark, it may be prudent to delay the application (where possible) in order to collate sufficient pre-filing evidence of acquired distinctiveness. That evidence should focus on and clearly quantify the relevant information outlined above. In this case, evidential shortfalls hugely prejudiced the Applicant’s arguments for acquired distinctiveness.
This decision provides a useful reminder of the evidence required in the context of acquired distinctiveness, and the inter-relationship between the absolute grounds for refusal.
Rose Smalley is an Associate at Womble Bond Dickinson (UK) LLP
Liam Turner, a Trainee Solicitor at Womble Bond Dickinson (UK) LLP, co-authored.