On the 1st February, 2013 the General Court of the EU analysed a case regarding the figurative PERLE’ trademark which met the criteria of absolute grounds for refusal. In its decision the General Court stated that this trademark registration should be rejected under the absolute grounds for refusal, because the trademark is descriptive and thus lacks distinctiveness for 33 class goods wine and sparkling wine.
The applicant Ferrari F.lli Lunelli Spa filed an international application with an extension to the European Union (EU) regarding the figurative trademark PERLE’ registration for 33 class goods. The expert partially rejected the application for 33 class goods wine and sparkling wine in accordance with the Regulation (EC) articles. This expert’s decision was appealed against. The Boards of Appeal of the OHIM dismissed the appeal arguing that in respect to 33 class goods wine and sparkling wine, the trademark was descriptive and lacked distinctive character. Also, OHIM’s Boards of Appeal decided that the evidence provided by the applicant was not sufficient enough in order to acknowledge that the trademark had acquired a distinctive character because of use in all interested member countries.
The General Court of the EU dismissed the claim and upheld the decision made by the Second Boards of Appeal. It was stated that the Boards of Appeal reached the right conclusion meaning that the public would perceive trademark PERLE’ as marking wine and sparkling wine characteristics, therefore, it would lack distinctiveness, as the consumers would not identify the origins of the product. In this case the relevant public was described as wine and sparkling wine consumers. They consisted of specialists and a general public who speak English and French, because ‘perlé’ is found in English and French dictionaries. The court stated that even if the average consumer does not understand the meaning of this term he or she will usually consult with a wine expert when buying, who will know the meaning of this term and will provide the necessary advice. The court noted that an apostrophe (‘) following the letter “E” in the trademark does not make the trademark look as having a distinctive character. Because of this reason the General Court rejected the application on the grounds that the trademark is identical with the term ‘perlé’. It is also of descriptive nature in respect to the registered goods and it cannot indicate the origins of the product to the relevant consumer.
The General Court also rejected applicant’s arguments that the Boards of Appeal had inadequately assessed provided evidence regarding the acquired distinctiveness. The court noted that in order to prove that the trademark has acquired the distinctive character it is necessary to confirm its acquired distinctiveness in all the territories where it is lacked. In this case the trademark was perceived as descriptive by the English and French speaking consumers, thus its acquired distinctiveness had to be proved in such countries as the United Kingdom, France, Belgium, Luxembourg, Malta and Ireland. Since the applicant gave evidence related only with the United Kingdom and France it was stated that there was not enough evidence for the trademark’s acquired distinctiveness.
The decision of this court is a useful reminder: evidence of acquired distinctiveness of the trademark has to encompass the whole geographic zone.