Establishing Acquired Distinctiveness

Written by Briffa | September 29, 2017

Intellectual Property

Trade marks that are descriptive or have become generic may be successfully registered if they have acquired distinctiveness, due to the use of mark by the proprietor.

Under the UK trade marks Act 1994 s 3 (1)the following shall not be registered-

(b)   trade marks which are devoid of any distinctive character,

(c)   trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services,

(d) trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade:

Provided that, a trade mark shall not be refused registration by virtue of paragraph (b), (c) or (d) above if, before the date of application for registration, it has in fact acquired a distinctive character as a result of the use made of it.

The Windsurfing Chiemsee case (joined cases C-108/97 and 109/97), addressed the issue of an EU trade mark application for CHIEMSEE, also the name of a lake in Bavaria. In this matter, the court established the applicable test to assess distinctive character acquired through use;

  • a significant proportion of the relevant class of persons has come to rely upon the mark so as to identify goods as originating from a particular undertaking; and


  •  overall assessment of the evidence (relevant factors):
    • the market share held by the mark;
    • how intensive, geographically widespread and long-standing use of the mark has been;
    • the amount invested by the undertaking in promoting the mark;
    • the proportion of the relevant class of persons who, because of the mark, identify goods as originating from a particular undertaking; and
    • statements from chambers of commerce and industry or other trade and professional associations.


  • For non-verbal marks the evidence of acquired distinctiveness must be adduced that relates to all Member States (i.e. Member States at the time the application was filed).
  • However, for verbal marks that territory is the territory where the term is understood which does not necessarily coincide with the territory where that language is generally spoken.

As in the recent Nestle v Cadbury’s matter, if the trade mark is used as part of another registered trade mark or in conjunction with such a mark;

“…the trade mark applicant must prove that the relevant class of persons perceive the goods or services designated exclusively by the mark applied for, as opposed to any other mark which might also be present, as originating from a particular company…”  

“….it is not sufficient for an applicant for registration of an inherently non-distinctive mark to show that, as a result of the use which has been made of it, consumers merely recognise it and associate it with the applicant’s goods….”

Therefore, the fact that the consumer recognises the product and associates it with applicant is not sufficient.

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