Acquired distinctiveness is a powerful tool that enables a mark, that would otherwise fall short of the minimum distinctiveness threshold to be registrable as a trademark, to be protected as such. Although the process requires time, strategy and resources, it is possible to turn a sign, which in principle would not meet the necessary requirements to access the register, into a trademark worth its weight in gold in the market.

Acquired distinctiveness is a fundamental concept in trademark law. It refers to the ability of a mark which initially lacked intrinsic distinctiveness, to acquire the necessary threshold of distinctiveness as a result of its intensive use and recognition. That is, the relevant public directly associates the goods and services covered by the sign as originating from a particular company. Consequently, the sign is capable of functioning as a trademark.

Acquired distinctiveness is not easy to prove. In fact, both the Spanish Trademark Office (OEPM) and the European Union Trademark Office (EUIPO) are very strict when it comes to assessing whether a mark has acquired distinctiveness.

Apart from the time and effort needed to build up distinctiveness, companies must be able to prove it through solid evidence and it is crucial for the evidence to come from independent entities, i.e., which are impartial in providing certain data.

EUIPO’s guidelines divide the proof into two blocks: direct evidence and secondary evidence.

Direct evidence is usually the most relevant evidence and can consist of:

  • polls
  • market studies
  • statements made by independent trade associations and professionals or public authorities.

Secondary evidence on the other hand supports the direct evidence and can consist of:

  • sales figures
  • invoices
  • magazines
  • catalogs

Although secondary evidence is extremely important and of huge value for the evidence overall, it is crucial to provide direct evidence. This is the evidence that will prove pivotal in demonstrating, indisputably, that the mark acquired distinctiveness before the filing of the trademark application. Such evidence can be in the form of market studies and opinion polls with clear-cut results, as well as statements by associations and professionals regarding consumers’ awareness of the mark, to the extent that they associate it with the goods and services offered by its owner.

An example of a trademark that was able to demonstrate acquired distinctiveness through use was European Union trademark no. 3071305 owned by JULIUS SÄMANN LTD, covering “air fresheners” in class 5 (decision of the First Board of Appeal of May 20, 2021, R 1222/2020-1, SHAPE OF A TREE SILHOUETTE (3D), in relation to the application for a declaration of invalidity No 27 682 C).

In 1952 Julius Sämann invented a paper air freshener in the shape of a tree; the intellectual property rights are now held by JSL (Julius Sämann Ltd.).

 

The owner provided a huge amount of evidencing proving that consumers in the EU had been exposed to the mark for many years. For example, between 2013 and 2017 approximately 42,600,000 air fresheners were sold in the UK, 30,000,000 in France, 1,000,000 in Spain and Greece, 4,000,000 in Croatia and 3,400,000 in Portugal. On a curious note, evidence of the mark in several television series broadcast throughout the EU was provided, such as  Blue Bloods, Bones, Breaking Bad, Chicago Fire, Criminal Minds, CSI, Defiance, Dexter, Everwood, Gilmore Girls, Grey’s Anatomy, Law & Order, Lost, NCIS, Numb3rs, The Simpsons and The Walking Dead.

The Board of Appeal concluded as follows: “Considering the provided evidence as whole, similar marketing strategies through licensee, the presence of the contested sign in every single Member State, the advertisement materials and the turnovers, the manner and length of use, the average consumer in EU using air fresheners certainly recognises the contested shape. Therefore, the Cancellation Division correctly found that the proprietor has been successful in demonstrating that between the date of the registration of the contested sign and the filing of the present invalidity application, the contested EUTM had acquired distinctiveness in the EU.”

In a similar case involving EU trademark no. 11571866 ICLOUD owned by Apple Inc., which was initially rejected in classes 38, 39 and 45 and for some goods and services in classes 9, 16, 35, 41 and 42 (decision of the Second Board of Appeal 05/12/2016, R 57/2016-2, ICLOUD), the incontrovertible evidence submitted demonstrated beyond any doubt the intensity of use and recognition of the mark ICLOUD by consumers for goods and services of Apple, Inc.: “Looking at the evidence as a whole, the documents submitted offer ample proof of the fact that the sign ‘ICLOUD’ has been consistently used as a mark in relation to computer software for data storage, retrieval of information, and computerized data storage and retrieval services and related cloud storage services, offering integrated online backup and syncing for Apple devices, builtin on iPhones, iPads, and Macs, but can also be accessed on Windows PC. This can clearly be seen from the witness statement of Thomas R. La Perle, the Intellectual Property Counsel for the applicant’s company, along with documents showing, among other things, press releases, sales figures and advertising expenditure in respect of the appellant’s ‘I’ prefix family of marks, which attest to the notoriety of this series of trade marks, and which are in turn corroborated by the third party declarations; furthermore the survey reports conducted show over 50% of the relevant public in the UK, Ireland and Malta associate the contested mark with a single company and that over 80% identify that single company as the applicant.”

In short, acquired distinctiveness is an effective tool that enables a mark, that would otherwise fall short of the minimum distinctiveness threshold to be registrable as a trademark, to be protected as such.