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Wednesday, 5 November 2008

Localised acquired distinctiveness; coming up in the ECJ

Being from East Yorkshire doesn't help you in Newport, but might in Luxembourg

The IPKat has stumbled across what must have been one of the now Mr Justice Arnold’s last decisions as a Lord Chancellor’s Appointed Person [Merpel wonders if we’re still allowed to call them that, since we still have a Lord Chancellor]. In it, he was called upon to hear an appeal refusing to register THE JOURNAL for, well, journals. It appears that the applicant had only used the mark in for publications in the East Yorkshire area and could do no better than showing acquired distinctiveness in that area at the very most. The hearing officer found that, following Europolis, acquired distinctiveness of one region was not sufficient.

Not to be defeated, the application changed its specification to “Lifestyle regional magazines containing information about and relevant to the area of East Yorkshire”. This led to the cunning argument that acquired distinctiveness had to be judged from the point of view of the relevant consumer. The relevant consumer for the goods covered by the specification was from East Yorkshire and a substantial number of such people would know of the publication.

The LCAP (as he then was) really rather fancied making a reference. He said:

In my judgment, the law is not entirely clear from EUROPOLIS. The Court of Justice was not addressing the question which arises in this case, which is whether it is permissible to claim acquired distinctiveness amongst a geographically-restricted class of consumers if the market for the product or service in question is limited to that locality or region. It is conceivable that the Court of Justice might give a different answer to this question, or least a more nuanced answer, than it gave to the questions in EUROPOLIS. In particular, I think that it is possible that different
considerations may apply in the case of a service which is normally provided to
a local clientele, such as hair dressing, than to goods. Accordingly, had it not been for the applicant’s opposition to a reference, I would have referred a question to the Court of Justice.
However the applicant, wisely avoiding the expense and delay of a reference made it known that he didn’t want a reference. Thus, the LCAP had to reach a decision himself. He found that acquired distinctiveness could not be shown if that distinctiveness was limited to a particular geographical location for a number of reasons. A mark in unitary across the UK, a mark should only become registrable where it has fully overcome the public policy objections of Arts 3(1)(b) to (d), goods may circulate outside the region in which they have become distinctive and there would be no protection for honest concurrent users who used the mark for similar goods but outside the specification (e.g. in a different geographical area).

The IPKat reckons that this is undoubtedly the right decision. Distinctiveness which is geographically limited can anyway be protected by the law of passing off, which doesn’t quite have the same sledgehammer effect on traders in identical goods as registered trade mark law. The applicant’s revised specification, though clever, looks to the IPKat like an attempt to get around limits on acquired distinctiveness which are there for very good reasons.



Coming up in the ECJ
November is a good month for dilution cases. On 27 November, the ECJ’s long-awaited decision in Intel v CPM is due out. The IPKat is hoping that this will bring some long-awaited clarity to dilution, but he has this nasty fear that the ECJ will somehow find a way of wriggling out of answering the question. Also, today (5 November), the ECJ heard L’Oreal v Bellure. This is a comparative advertising case, referred by the UK, in which the Court of Appeal is effectively asking whether some form of harm to the trade mark owner in needed in order to prove unfair advantage under Art.5(2).

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