How Unitary is the EU Trade Mark? Territorial Aspects of Acquired Distinctiveness

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The geographical scope of the acquired distinctiveness of EU trade marks (EUTMs) is the subject of recurring dilemmas in case law and among scholars. The development of case law in this area is driven by the endeavour to reconcile the requirement that the acquired distinctiveness of such marks ought to be present throughout all Member States while simultaneously allowing certain evidentiary relaxation in that regard. Ultimately, however, the content of the requirements of establishing acquired distinctiveness in such instances remains, in the light of case law, uncertain. This paper argues that the principle of the unitary character of EUTMs should lead to adopting a more unitary approach towards the assessment of acquired distinctiveness, instead of the country-by-country approach dominant in case law. More specifically, whenever no territorially varying consumer perceptions are involved in establishing a lack of inherent distinctiveness of an EUTM, the territory of the EU should be treated, for the sake of establishing acquired distinctiveness, as a monolith undivided by borders between the Member States. This is normally the case with non-word marks, such as shapes or colour marks, which are perceived in a uniform manner throughout the EU as either possessing or lacking inherent distinctiveness. Concessions from this unitary approach are justified whenever territorially varying perceptions are involved. This normally concerns the descriptiveness or otherwise non-distinctiveness of word marks due to linguistic differences that are tailored across borders between Member States. The posited unitary approach concerning non-word marks should, however, be a measured one. Not only should acquired distinctiveness be present in the majority of the EU territory, but it should also be located at a proper geographical spread (without, however, following the country-by-country method). In the light of this approach, a non-word EUTM could still be registered (and remain incontestable) based on acquired distinctiveness when EU territories where acquired distinctiveness has not been established would constitute “blank” areas sporadically scattered across the Union without, however, constituting a concentrated larger part of the EU. Such “blank” areas could correspond to territories of a specific Member State or Member States. Negative effects of overprotection in such “blank” areas could be subsequently prevented with additional mitigating tools available at the stage of infringement and enforcement of EUTMs.