Getty Images (US) Inc is to appeal to the European Court of Justice after the General Court upheld a decision to refuse registration of ‘photos.com’ as a trade mark. The Office cited a lack of distinctiveness in the mark in reaching its decision to uphold the findings of the Board of Appeal. The stock photo agency had sought registration in Classes 9, 42 and 45.
The relevant public
In assessing the registrability of the mark, the Court found the relevant public to be both ordinary members of the public and professionals in the English and French speaking parts of the EU. Notwithstanding this, the Board of Appeal noted that most EU inhabitants would understand the meaning of the word ‘photos’.
Descriptive in nature
The sign as a whole was held to be descriptive and therefore lacked the necessary level of distinctiveness for registration. The word ‘photos’ describes the subject matter under which the mark is used, namely photographs. The ‘.com’ element serves only denote a web address. The Board of Appeal pointed out that the addition of the top level domain did not add distinctiveness to the descriptive second level domain because the overall impression created by the mark as a whole was neither unusual or fanciful.
On the basis of the above, the Board concluded that the mark was not distinctive, as it simply describes the goods and services provided and does not identify those goods as having originated from a particular undertaking. It is worth noting at this point that ownership of a domain name does not confer any advantages on a subsequent trade mark application unless the applicant can demonstrate it has acquired distinctiveness through use of the mark prior to registration..
No evidence of acquired distinctiveness
In addition to the above findings, the Board of Appeal held that Getty had failed to show the proposed mark had acquired distinctiveness through use in respect of the goods and services and services applied for prior to the filing date. Getty had adduced evidence to show use of the domain name, although the Board of Appeal ruled that the relevant public did not perceive it as a trade mark. Online discussions and recommendations of ‘photos.com’ as containing high quality images did not establish a link between the proposed mark and the goods and services for registration.
Getty has decided to appeal the decision of the General Court to the European Court of Justice, in a move which was widely anticipated. The hearing is likely to take place in early 2014.
By Aasim Durrani. Aasim is a Trainee Solicitor and can be contacted on email@example.com
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