Article 7(3) of the EUTMR is a great life jacket for those who try to obtain protection of a risky trademark, especially the non-traditional one (color, sound, shape, etc.). However, not every applicant understands well how to “swim” with the life jacket, and thus there are common mistakes and misunderstandings leading to refusals.
Acquired distinctiveness is a hard instrument to use, so—when appealing to it—legal counsel and in-house lawyer should not forget the following ideas.
· Commercial success is not a distinctive character
Absolutely, wording of the Article 7(3) tells that the trademark must be used, and that its distinctiveness must be a consequence of such genuine use. Nevertheless, distinctive means only serving as an indication of commercial origin. It is a question of a sign per se, not your brand analytics. That is why turnover of 100 million EUR itself does not convince the EUIPO, and the popularity of products marketed under a particular color scheme does not lead to registration of this color.
· There is better evidence
Applicants tend to show their statistics as a piece of evidence: turnover figures, advertising metrics, numbers of subscribed users. However, these are not great, not terrible examples of proof. Although they are easily accessible, they do not show what must have been shown. Consumer surveys, market studies and reports of independent trade associations are better grounds to claim acquired distinctiveness. 500 pages of sales figures and internal annual reports can be way weaker from the Office’s perspective in comparison to one properly designed consumer survey.
· Appropriate time is success
A lot of applicants hope that their application is not going to face a refusal. That is why in most cases evidence related work starts only after the refusal has been received. However, good evidence cannot be produced in two months: trade associations also have own workload and cannot answer immediately, consumer surveys take couple of months to conduct, market studies should cover all relevant states inside the EU. When trying your luck with a sign you are not confident about, use acquired distinctiveness as a long-term legal strategy, not as a fault of last resort.
· Evidence extrapolation needs care
Although a general rule is that acquired distinctiveness must be shown in every member state in which the sign initially does not serve function of distinguishing one undertaking from another, in certain cases the EUIPO Board and courts started to allow countries with similar economics, cultures and societies in groups. For instance, Germany and Austria might be placed under an umbrella of the same evidence. However, no blank holes are still allowed in this approach—whether the applicant failed to show immanent distinctiveness in Malta, Malta must be covered by evidence.
There is a guide for those who would like to use acquired distinctiveness lifeguard in their application procedures:
1. Gather what shows recognition, not commercial success
2. Rely on surveys and recognized third-party reports
3. Start preparation as early as possible
4. Extrapolate wisely leaving no evidential gap
