Not to be defeated, the application changed its specification to “Lifestyle regional magazines containing information about and relevant to the area of East Yorkshire”. This led to the cunning argument that acquired distinctiveness had to be judged from the point of view of the relevant consumer. The relevant consumer for the goods covered by the specification was from East Yorkshire and a substantial number of such people would know of the publication.
The LCAP (as he then was) really rather fancied making a reference. He said:
In my judgment, the law is not entirely clear from EUROPOLIS. The Court of Justice was not addressing the question which arises in this case, which is whether it is permissible to claim acquired distinctiveness amongst a geographically-restricted class of consumers if the market for the product or service in question is limited to that locality or region. It is conceivable that the Court of Justice might give a different answer to this question, or least a more nuanced answer, than it gave to the questions in EUROPOLIS. In particular, I think that it is possible that different
considerations may apply in the case of a service which is normally provided to
a local clientele, such as hair dressing, than to goods. Accordingly, had it not been for the applicant’s opposition to a reference, I would have referred a question to the Court of Justice.
The IPKat reckons that this is undoubtedly the right decision. Distinctiveness which is geographically limited can anyway be protected by the law of passing off, which doesn’t quite have the same sledgehammer effect on traders in identical goods as registered trade mark law. The applicant’s revised specification, though clever, looks to the IPKat like an attempt to get around limits on acquired distinctiveness which are there for very good reasons.
Coming up in the ECJ