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Sunday, 16 December 2012

PHOTOS.COM: Distinctiveness, domain names and evidence

The Cheshire Cat - the epitome of
of distinctive character
Only a few days ago, the Katonomist gave an insider's view of the growing field of empirical research into trade marks, which touched on issues such as online use and the probative value of organic results from online search engines. As luck would have it, some of those issues indirectly arose in Case T-338/11 Getty Images (US), Inc. v OHIM, where the General Court of the Court of Justice of the European Union (CJEU) was required to consider, among other things, whether evidence was of sufficient force to show that a domain name had acquired distinctive character through use.

Getty contested a decision of the Second Board of Appeal refusing registration of the word mark PHOTOS.COM in classes 9 (computer software), 42 (installation and maintenance of computer software) and 45 (licensing of images and footage) on the grounds that the Board erred in finding that the mark was descriptive (article 7(1)(c), Regulation No 207/2009) and devoid of distinctive character (article 7(1)(b) and 7(3)). Getty submitted that the mark did in fact have distinctive character and had also acquired distinctive character through use: since 2003 it had been used continuously by itself and its predecessor to identify an internet-based database service. Further, by failing to take account of earlier registrations of two identical Community trade marks for similar goods and services, the general principles of equal treatment and protection of legitimate expectations were breached. The General Court did not agree and dismissed the action.

Distinctive Character

In order to fulfil the essential function of a trade mark, a mark must be distinct: it must be possible for the relevant public to identify the mark, without any possibility of confusion, with the goods or services for which registration is sought as originating from a given undertaking as distinguished from the goods or services from other undertakings. The test requires an assessment of the mark with reference to both its goods or services and the perception of the relevant public. Where a mark is composed of both words and a typographical sign, such as a top level domain (.com), each element may be devoid of distinctive character but may be distinctive when taken as a whole.  

The top level domain is on
the top-end-bottom bit
In this case, the Board of Appeal correctly identified the relevant public as the average consumer of the EU, drawn from both professionals and the public at large, deemed to be reasonably well-informed, observant and circumspect. The Board also correctly observed that the mark reproduces the characteristic structure of a domain name and would be perceived as such by the relevant public. Taking the two components of the sign individually, both were devoid of intrinsic distinctive character: 'PHOTOS' immediately informs the relevant public that the goods and services relate to photography, and; '.COM' is a technical and generic element, immediately recognisable as the normal structure of an internet site address, indicating that goods and services can be obtained or viewed online or are internet-related. Taking the mark as a whole, the dot separating the second-level domain name ('photos') and the top level domain ('com') was not a graphic feature but typically used for separating domain levels. Further, the addition of '.COM' to the descriptive word 'PHOTOS' did not render the sign distinctive as a whole. The distinctive part of a domain name is the second-level domain, not the generic top level domain. Nor did the combination of the elements have any special characteristics peculiar to it: the relevant public's perception of the whole would be no different from its perception of the combination of the two elements.

The mark was, therefore, devoid of distinctive character. That conclusion was not invalidated by Getty's argument that consumers, merely by entering the mark on an internet browser, could distinguish the goods and services as a photo-magazine available on an internet site owned by them. The structure of the mark, the lack of distinctiveness of its components and the fact that it was a word mark, were all characteristics that the reasonably attentive average consumer would perceive as purely promotional, abstract information and not as indicating the commercial origin of the goods and services concerned.

It was also important to draw a distinction between rights derived from the registration of a domain name and the rights derived from the registration of a sign as a Community trade mark. Simply owing a domain name does not mean that, as a consequence, that name can be registered as a Community trade mark. Only if all the conditions laid down in Regulation No 207/2009 are satisfied can that be possible. Nor could the test for establishing distinctive character of a mark be modified to include an assessment by reference to the steps taken by a consumer to access goods or services. In any event, Getty's argument was ineffective as it did not call into question the finding that the sign in itself was incapable of identifying specific commercial origin of the goods and services and that the relevant public would perceive it simply as a source of information for goods related to photography accessible on the internet.

Distinctive Character Acquired Through Use

Abstract Cat
The scope of the exception that a mark may be registered if it has acquired distinctive character through use is construed in light of the grounds of refusal: a significant proportion of the relevant public, reasonably well informed, observant and circumspect, in the substantial part of the EU in which it lacked distinctiveness, must identify and associate the goods or services with the mark before an application is filed. Whether that is demonstrated requires an overall assessment of the evidence, not general or abstract data, relating to the period subsequent to the date of filing and based on factors such as; 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, by virtue of the mark, identify the goods or services as originating from a particular undertaking; statements from chambers of commerce and industry or other trade and professional associations; and opinion polls. The registration of a mark composed of signs or indications which are also used to designate a domain name is not excluded as such, however a sign which fulfils functions other than that of a trade mark is distinctive only if it can be perceived immediately as an indication of the commercial origin of the goods or services in question.

Broadly, the Board of Appeal was correct to find that Getty failed to provide evidence of sufficient probative value that distinctiveness had been acquired through use. It was not possible to draw any firm conclusions concerning the relevant factors from the evidence, which related almost entirely to the use of the domain name and not use as a trade mark:
  • it was impossible to establish a link between the mark and all the goods and services covered by the application from results of internet searches using a search engine conducted from Denmark, Finland, Sweden and the UK between September 2002 and January 2008. The documents gave an indication of the domain name's use and promotion in four Member States, but that did not demonstrate the market share held by Getty in a substantial part of the EU or that a significant proportion of the relevant public were able, by virtue of the mark, to identify the goods or services as originating from a particular undertaking;
  • a declaration on oath made by the director of Getty's legal department, a person therefore connected to the applicant through an employment relationship, could not in itself constitute sufficient evidence. Again, this evidence was only indicative and required to be corroborated by other evidence; 
  • a list of European members who had subscribed or purchased a licence on its website from October to December 2009 was irrelevant because it related to a period subsequent to the filing date of 15th September 2009;
  • statements from third parties merely mentioning the word sign 'PHOTOS.COM' on photos from the website and press articles, without reference to goods and services, did not enable either the identification of the commercial origin of the goods and services or whether they concerned a trade mark or the website;
  • printouts from the website were irrelevant because they concerned the territory of the US, as was apparent from the currency indicated for taking out a subscription. The fact that visitors could convert the currency into euros did not prove that the site was also intended for European consumers;
  • the fact that the website could be consulted in various languages of the EU was not sufficient to show use by the relevant public in the substantial part of the European Union in which it lacked distinctiveness;
  • worldwide assess to the site did not mean that the domain name fulfilled the function of a trade mark. The fact that internet users visit the site on which the goods and services are offered did not establish use of the mark, especially when the evidence fails to make reference to either the date when the data was generated or to the person responsible for preparing that data;
  • data concerning Getty's volume of sale and annual revenue in the EU between 2005 and 2008 failed to establish a link with the goods and services covered by the application.
In light of the above, the Court concluded that the evidence was only of use of the sign other than as a trade mark, and did not therefore constitute proof of distinctive character acquired through use.

Principles of Equal Treatment and Protection of Legitimate Expectations


The general principles of equal treatment and sound administration require that the OHIM take into account decisions already taken in respect of similar applications. However, the application of those principles must be consistent with respect for legality. The examination of any trade mark application, on its particular factual circumstances, must be stringent and comprehensive for reasons of legal certainty and sound administration so that marks are not improperly registered. Getty's submission that previous registrations gave rise to a presumption of registrability, supported by the fact that none of its competitors had contested the validity of those registrations, was implicitly denied: it could not rely on earlier OHIM decisions in support of its allegations of breach of the principles when its application was correctly denied on grounds of refusal laid down in Article 7.


The focus in this case was on goods and services and how the relevant public would identify them with a mark of no inherent distinctive character, highlighting that when it comes to domain names it's not their general use but their use as a trade mark that warrants the protection of trade mark law.

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