Acquisition of distinctive character of a mark as a result of use.

[05/02/2021] In order to be valid, a mark must be distinctive. The distinctive character can be inherent or “acquired through use” where the mark owner is able to prove such use that the relevant public identifies the commercial origin of the goods and/or services designated by the trademark.

Recent decisions illustrate that it is not always easy to justify the acquisition of distinctive character through use of a mark.

In January 2021, the UKIPO issued a refusal against the application to register the figurative trademark Tefal for lack of distinctive character, considering that the figurative element, i.e. the red dot in the middle of the pan could be perceived as a decorative or functional element. The evidence for acquired distinctiveness through use submitted by Tefal was insufficient; the Office considered indeed that the public identified the red dot trademark as a ‘heat spot’ and not as a sign of trade origin.

In December 2020, the Swedish Patent and Market Court of Appeal also considered that the three-dimensional trademark “Crocs” was not distinctive and that the acquisition of such distinctiveness had not been established by its holder despite the sale success in Sweden, considering that most of the respondents of the survey recognise the generic shape of the shoe but do not necessarily attribute it to Crocs.

In its ruling of 15 January 2019, the Paris Court of Appeal refused to recognize the distinctive character of the word mark RENT A CAR despite its notoriousness; even if that mark is well known by French consumers, those do not systematically associate its name to a given company as these words are also used by other rent car companies. 

These matters show how difficult it is to prove the acquisition of distinctive character through use before the administrative or judicial authorities. It is necessary to carefully select the pieces of evidence that best support that the public perceives a sign as a trademark.

Our staff would be happy to assist you in this field.