Mermeren Kombinat AD v Fox Marble Holdings Plc

When assessing whether a geographical name is inherently descriptive, the tribunal must consider the perception of the relevant average consumer and disregard use of the mark. A place unknown to that consumer cannot inherently designate geographical origin.

Acquired distinctiveness requires that, by the relevant date, at least a significant proportion of the relevant class of persons perceived the goods as originating from a single undertaking because of use of the sign as a trade mark. Recognition or association with the proprietor’s goods alone is insufficient. Reliance on the mark is relevant but not essential. The proportion must be markedly above de minimis, though it need not exceed half.

Mermeren owned an EU trade mark for the word SIVEC in respect of marble. Fox used the identical sign for marble from a quarry in the Prilep region of Macedonia and counterclaimed for invalidity and revocation.

The principal issue was whether SIVEC was inherently descriptive of geographical origin under Article 7(1)(c) of Council Regulation (EC) No. 207/2009, or had acquired distinctive character through use under Articles 7(3) and 52(2). The court also considered the relevant dates, the relevant class of consumers, and the significance of evidence showing that the sign was perceived as indicating a single commercial source.

1. Inherent geographical descriptiveness. The relevant average consumer was a specialist marble dealer or a person advising on materials for buildings. The validity assessment under Article 7(1)(c) concerned the mark’s inherent character at the filing date and excluded use of the mark. Although Sivec was a real place, it was so obscure that the relevant average consumer had not heard of it. It therefore could not inherently designate geographical origin in that consumer’s mind. Fox’s Article 7(1)(c) case failed.
2. Acquired distinctiveness. The court applied the overall assessment required by Windsurfing Chiemsee Productions- und Vertriebs GmbH v Boots- und Segelzubehör Walter Huber Joined Cases C-108/97 and C-109/97, EU:C:1999:230. The question was whether, by the filing date, at least a significant proportion of the relevant class perceived SIVEC as identifying marble originating from a single undertaking because of use as a trade mark. Recognition and association with Mermeren’s goods were insufficient without that perception.
3. The relevant proportion had to be markedly above de minimis, but need not be more than half. Evidence of reliance on the sign as an indication of origin could establish distinctiveness, but reliance was not a precondition. The court could consider market share, intensity, geographical spread and duration of use, promotional expenditure, consumer perception, and trade-association statements. A survey was permissible where the tribunal had particular difficulty assessing the evidence.
4. Use before 2011 had associated SIVEC closely with Mermeren but had not established use as a trade mark. Subsequent branding, trade-fair evidence and use of the registered-mark symbol established that, by 9 August 2013, a significant proportion of relevant persons perceived SIVEC as identifying marble from a single undertaking. The mark was therefore validly registered. It remained distinctive by the counterclaim date, 7 March 2016.
5. Article 52(2) had the same substantive meaning as Article 7(3), but permitted post-registration use to be considered. The registration was not invalid and there were no grounds for revocation. The counterclaim was dismissed and the mark remained valid.