This practice note has been drafted to give guidance only. In each case, full consideration must be given to all the relevant factors of the case and each one must be considered on its merits. It is not possible to provide a model or formula which will produce automatically correct answers. Judgment is required. In particular circumstances a departure from the normal practice may be justified.
Reasons for filing evidence
Article 7 (3) provides that "Paragraph 1 (b), (c) and (d) shall not apply if the trade mark has become distinctive in relation to the goods and services for which registration is requested in consequence of the use which has been made of it." A trade mark is distinctive in this sense if it is recognized by a sufficiently large part of the relevant public as a mark. An immediate link between the mark and the applicant is not necessary.
It is important to note that:
To which point in time must the evidence relate?
The mark must have acquired distinctiveness at the time of filing (filing date), and the distinctiveness must still be present at the time of decision on registrability.
To where must the evidence relate?
"The examiner must bear in mind whether the ground for objection exists in the whole of the Community or only part of it."
Community as a whole
If the objection is based on lack of distinctiveness of a simple mark (e.g. single colour, simple geometrical shape, a single number or letter), or very complex one that merely decorates the product, the objection would almost always concern the whole Community. This list of examples is not exhaustive.
If the objection concerns a language which, in relation to the goods/services in question, is well understood throughout the Community (e.g. English for goods/services in the computer field) the objection will likely extend to the whole Community. Similarly, some words are almost universally understood irrespective of their language source (e.g. extra, vino) and the objection would extend to the whole Community.
In such cases the evidence must relate to the Community as a whole and not just a part of it.
It is, however, possible to extrapolate evidence from one part of the Community to others. If, for example an opinion poll shows certain results arising from a particular extent (amount and time) of use in one part of the Community it is reasonable to assume, absent good grounds for taking a contrary view, that the same extent of use would have the same consequence elsewhere. In such a case a further opinion poll would not be necessary for each part of the Community.
The Community is taken as a whole and not merely as an addition of the territories of its Member States. This means in particular that the evidence must relate to all the relevant (territorial) markets in the Community. This will generally require a prior determination of the relevant (territorial) market. This exercise involves an evaluation of the goods or services in question and the relevant means of distribution sales and sales promotion. The relevant markets will generally comprise territories irrespective of national boundaries. The evidence must relate to each of the markets, but not necessarily to all of the sub-territories of each of these markets.
Part of the Community
Where the objection relates to part of the Community only in accordance with Article 7 (2) the evidence need only relate to that area. While this generally arises in respect of word marks with a limited linguistic understanding it may also arise in relation to other marks.
What has been said above about the relevant territorial markets in the Community applies mutatis mutandis to the relevant market in the part of the Community under consideration. For example, where a mark is descriptive in the Finnish language, the evidence must relate to the territory where Finnish is spoken or understood, but the evidence need not necessarily relate to each individual region or subregion in that territory.
To which (part of the) public must the evidence relate?
The evidence must relate to the (part of the) public to which the mark is addressed. The starting point for this exercise is the list of goods and services in the application. Unless these goods are by their nature addressed to specialists or a limited public, the goods or services are taken in their ordinary meaning and will generally be addressed to the public in general. Thus, while products in Class 1 are generally intended for the trade, food and drink products are available to consumers generally.
The evidence must further demonstrate that a sufficiently large part of the public has the requisite knowledge that the sign constitutes a mark (even though its source may be unknown). It is not possible to give any fixed percentages in this regard - this would limit the available evidence essentially to public-opinion surveys. Rather, the examiner must evaluate whether, given all the evidence produced and the inferences to be drawn from it is likely that a relevant part of the public addressed is aware of the mark in the sense mentioned before.
Nature of evidence
It is a matter for the applicant to decide on the nature of the evidence to present. While Article 76 (1) lists some examples it is not exhaustive. Examiners must be prepared to accept opinion polls, surveys, statements from the trade and consumer organizations, articles, brochures, samples, evidence of turnover and advertising and other types of promotion, of successful prosecution of infringers, of trade mark registrations obtained, etc.
Assessment of the evidence
When examining and deciding on the amount, nature etc. of use necessary the examiner must bear in mind the nature of the trade concerned, the manner in which the goods and services are provided and the relevant public, for example, whether they are specialized or for the general public. The extent to which the trade mark is, on the face of it, lacking distinctive characteristics must be weighed against the evidence provided.
Opinion polls and surveys
Well-conducted opinion polls, namely where the questions asked are relevant, and not leading, and the sample interviewed is properly chosen with no inbuilt bias are particularly persuasive. This applies in particular to such polls or surveys when they are carried out by independent and well-recognized organizations or institutions.
Trade evidence
Evidence from independent trade associations, consumer organizations and competitors should also be given weight. Evidence from suppliers or distributors should, generally, be given less weight. The degree of independence of the latter will influence the weight to be given.
Turnover and advertising
Where figures for turnover or advertising are supplied these should relate only to the goods or services in respect of which registration is sought. If the application is for "coffee" the figures supplied should not relate to "food". In order to provide a context for assessment of such evidence the applicant should give a general indication of the size of the relevant market (Community or part of the Community). It is desirable that the turnover figures be segregated on an annual basis. In all cases the evidence should show when the use commenced. There must be pre-filing date evidence. The greater the amount of use the more weight must be given to it.
Manner of use
The evidence should show examples of how the mark is used (brochures, packaging etc). Use of a substantially different mark should not be given much weight. It is sometimes the case that the use shown is of a sign which, while similar to the mark applied for, is in itself distinctive. In such cases the evidence should be disregarded.
In other cases the evidence shows use of the mark applied for as part of a more
complex sign, frequently in association with a "House
Mark"1 or more general identifier of the applicant.
An assessment has to be made whether this constitutes use of the mark applied
for. The answer will be influenced by the degree to which the mark applied for
lacks distinctive character or is descriptive.
Length of use
The length of use in addition to the amount (volume) of use is of particular relevance. Thus the evidence should show the commencement of use, unless that information is immaterial because the use has in any event begun long before the filing date. The evidence should also show that the use has been continuous or indicate reasons if this should not have been the case.
Post application use
Evidence which relates to the period after the filing date of the application will be admitted but given less weight than that which relates to the period before the filing date. The distance in time between the filing date and the date to which the evidence relates will have to be taken into account. The closer to the filing date the more weight should be given.
Where the evidence of use relates exclusively to a period after the filing date the evidence should be disregarded.
Indirect evidence of use
The evidence may consist of registrations obtained in a member state on the basis of acquired distinctiveness. Unless there are good grounds for discounting such a registration the examiner should accept this indirect evidence.
Publication
If the mark is accepted based on Article 7 (3), this information must also be published (Rule 12 [i]). This applies also where the evidence is indirect, that is based on a registration in a member state as a result of acquired distinctiveness, the indication must be published.
In practice the publication in the CTM Bulletin is done by using the INID Code 521 without any further indication or explanation.