Getty Images (US) Inc v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (Judges Papsavvas (Rapporteur and President), Vadapalas and O’Higgins): General Court of the European Union (Fifth Chamber): 21 November 2012
On 15 September 2009, the applicant company, established in New York, filed an application for registration of a Community trademark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under Council Regulation (EC) 207/2009 (on the Community trademark). The mark in respect of which registration was sought was the word-mark ‘PHOTOS.COM’.
The goods and services in respect of which registration was sought were in Classes 9, 42 and 45 of the Nice Agreement (concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks), as revised and amended. By decision of 2 August 2010, the examiner refused the application for registration on the grounds that the mark applied for was descriptive and devoid of distinctive character for the purposes of article 7(1)(b) and (c) and article 7(2) of that regulation. On 23 September 2010, the applicant lodged with OHIM a notice of appeal under against the examiner’s decision to refuse registration of the mark for the relevant goods and services.
By decision of 6 April 2011 (the contested decision), the Second Board of Appeal of OHIM dismissed the appeal on the basis of article 7(1)(b) and (c) and article 7(3) of Regulation 207/2009 (on the Community trademark) (the Regulation), deciding that the word-mark in question was descriptive and that it lacked distinctive character. In support of its action, the applicant submitted that there had been: (i) infringement of article 7(1)(b) of the Regulation; (ii) infringement of article 7(3) of the Regulation; and (iii) breach of the principles of equal treatment and the protection of legitimate expectations. In support of the latter plea, the applicant submitted that, in failing to take account of the earlier registrations of two identical Community trademarks belonging to it for goods and services similar to those covered by the mark applied for, the Board of Appeal had acted in breach of the principles of equal treatment and the protection of legitimate expectations.
The Court ruled: (1) Under article 7(1)(b) of the Regulation, ‘trademarks which are devoid of any distinctive character’ were not to be registered. Further, article 7(2) of that regulation stated that ‘[Article 7(1)] shall apply notwithstanding that the grounds of non-registrability obtain in only part of the [European Union]’. It was settled law that the distinctiveness of a trademark for the purposes of article 7(1)(b) of the Regulation meant that the mark in question made it possible to identify the goods or the services for which registration was sought as originating from a given undertaking and accordingly to distinguish the goods or services from those of other undertakings, and that the mark was therefore able to fulfil the essential function of the trademark. Furthermore, the distinctive character of a mark should be assessed, first, by reference to the goods or services in respect of which registration was sought and, secondly, by reference to the perception of the relevant public (see - of the judgment).
In the instant case, in the absence of special characteristics peculiar to the sign at issue, the relevant public’s perception of that sign would be no different from its perception of the combination of the two words comprising the sign. It followed that, as the Board of Appeal had rightly pointed out, the relevant public would not be able to distinguish the goods and services covered by the trademark application from goods and services of a different commercial origin. Consequently, the sign was devoid of distinctive character (see  of the judgment). The Board of Appeal had been entitled to find that, from the point of view of the relevant public, the word sign PHOTOS.COM was devoid of distinctive character for the purposes of article 7(1)(b) of the Regulation as regards the goods and services concerned (see  of the judgment).
(2) In determining whether a mark had acquired distinctive character because of the use made of it, the competent authority should make an overall assessment of the evidence that the mark had come to identify the goods concerned as originating from a particular undertaking, and accordingly to distinguish them from goods of other undertakings. In that regard, account should be taken of, in particular, the market share held by the mark; how intensive, geographically widespread and long‑standing use of the mark had been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant class of persons who, by virtue of the mark, identified the goods or services as originating from a particular undertaking; statements from chambers of commerce and industry or other trade and professional associations; and opinion polls (see ,  of the judgment).
In the instant case, the evidence produced by the applicant related almost exclusively to the use of the domain name ‘photos.com’. However, use of the sign at issue other than as a trademark did not constitute proof of distinctive character acquired through use. Further, the applicant had not demonstrated that the use made of the mark applied for has been representative, such as to show the market share held by the applicant, by virtue of that mark, in the English-speaking parts of the European Union. Consequently, as it was not possible to draw any firm conclusions concerning the relevant factors from the evidence produced, the Board of Appeal had been entitled to find that the documents produced by the applicant had been insufficient to prove that, for the purposes of article 7(3) of the Regulation, the mark applied for had acquired distinctive character through the use made of it (see ,  of the judgment).
(3) It had been held in relation to the second plea in law, that the Board of Appeal had been fully entitled to find that, having regard to the goods at issue and the way in which the sign would be perceived by the relevant class of persons, the application for registration had been covered by the ground for refusal laid down in article 7(1)(b) of the Regulation. It followed that the applicant could not, in support of its allegations of breach of the principles of equal treatment and the protection of legitimate expectations, usefully rely on earlier decisions of OHIM (see  of the judgment).