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Online Trade Marks

Written by Rehana Ali on 17 December 2012

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This week in the case Getty Images (US) Inc. V OHIM the General Court of the Court of Justice of the European Union (CJEU) considered whether there was sufficient evidence to demonstrate that a domain name had acquired distinctive character through use. Where a trade mark is refused registration due to lack of distinctiveness, an applicant may re-apply for registration if they can prove a mark has acquired distinctiveness through use.

Getty disputed a refusal of registration of the word mark photos.com in various technology related classes, it was denied registration as it was concluded the mark was descriptive and devoid of distinctive character. Getty argued that the mark had acquired distinctive character through use as it had been utilised since 2003 to identify an internet based database service. The General court was not in agreement and dismissed the action.

In order to fulfil the crucial function of a trade mark, a mark must be distinct, that is, the mark must allow the relevant public to identify the mark (without confusion) as representing the goods or services of a particular undertaking. When a mark, such as a domain name contains two separate elements such as a name and a typographical sign (such as .com), each individual element may be devoid of distinctiveness but as a whole a mark may be considered distinctive.

This was not the case for the photos.com mark, as the court stated that the word photos instantly creates the image that goods or services relate to photography, further the addition of the .com in no way made the mark distinctive as a whole. The court also emphasised the point that the simple ownership of a domain name does not mean that the name may be registered as a trade mark. It was further held that the mark had not acquired distinctive character through use as Getty had failed to provide sufficient evidence that it had. The vast majority of the evidence provided by Getty related to the use of the name as a domain name and not use as a trade mark.

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