Mermeren Kombinat AD v Fox Marble Holdings Plc

Since the time of the Roman empire marble has been extracted from quarries near the city now called Prilep, in the Balkan peninsula. The marble was and is famed for its white colour and homogenous appearance which have made it a marble suitable for statuary, for use in the Emperor Diocletian’s palace and more recently in the Grand Mosque in Abu Dhabi and in upmarket bathrooms.

Prilep and its nearby quarries are now in the Republic of Macedonia, formerly part of Yugoslavia. Due to a dispute with Greece over its name, that state is has become a member of organisations such as the United Nations and the Council of Europe using a longer title: ‘The Former Yugoslav Republic of Macedonia’. Solely for brevity and meaning no offence to Greece, I will call it Macedonia.

The claimant (“Mermeren”) is a Macedonian company which has been extracting marble from near Prilep since 1950. A decision of the People’s Republic of Macedonia dated 1950 records the transfer to Mermeren of “the plants for the extraction of marble in s. Chaska, Debreshite, Skrka and Sivec within Prilep region” (in translation from the Macedonian). Of the places mentioned Chaska and Debreshite are villages, and Skrka is a mountain, all of them near Prilep.

That leaves Sivec, pronounced Sivets locally. I was shown maps dating from the 1970s in which Sivec is identified as a mountain pass in the same region. Sivec is also named as a location in a geological map dated 1969 showing, among other things, areas of marble deposits north of Prilep.

Mermeren is the proprietor of EU Trade Mark No. 012057915 (“the Trade Mark”), which takes the form of the word SIVEC, registered in respect of ‘Marble of all types’ among other related goods. It was granted as of 9 August 2013.

The defendant (“Fox”) is a UK company incorporated in October 2011 which extracts and sells marble. One of its quarries is in the Prilep region in Macedonia. It sells that marble under the sign ‘Sivec’.

Mermeren has brought the present proceedings against Fox for infringement of the Trade Mark. Fox has admitted using a sign identical to the Trade Mark for goods identical to those in respect of which the Trade Mark is registered. A defence to infringement was pleaded pursuant to art.12 of Council Regulation (EC) No. 207/2009 (“the Regulation”), namely that the Trade Mark indicated the geographical origin of the marble in respect of which the mark was used by Fox. Fox’s main defence and principal contention, however, was that the Trade Mark was invalidly registered and/or should be revoked. Fox counterclaimed accordingly.

Emma Himsworth QC and David Wilkinson appeared for Mermeren, Michael Hicks for Fox.

Fox’s counterclaim alleging invalidity of the Trade Mark relied on art.7(1)(b), (c) and (d) of the Regulation; in support of the allegation that the Trade Mark should be revoked Fox relied on art.51(1)(b). Fox also pleaded an allegation that the Trade Mark was registered in bad faith, contrary to art.52(1)(b) of the Regulation.

All allegations were denied by Mermeren. In addition it relied on acquired distinctiveness. Mermeren’s Defence to Counterclaim pleaded only art.7(3) in this regard. The list of issues at the end of the Order made at the case management conference on 25 July 2016 left the matter vague. At trial the parties behaved as if Mermeren had also relied on art.52(2). I will do likewise.

Mr Hicks submitted in opening that the dispute in its various guises boiled down to essentially one point: whether at the relevant dates ‘Sivec’ served in trade to designate the geographical origin of a type of marble, within the meaning of art.7(1)(c) of the Regulation. He accepted that Fox’s argument for invalidity under art.7(1)(b) and (d) and for revocation of the Trade Mark under art.51(1)(b) would not succeed if its case under art.7(1)(c) failed, taking into account Mermeren’s argument of acquired distinctiveness through use.

In opening Mr Hicks maintained the allegation of bad faith but it was not pursued in his closing submissions. In closing Mr Hicks also conceded that art.12 provided Fox with no defence if I found, in the context of the arguments on validity, that the Trade Mark did not designate the geographic origin of marble. I am therefore concerned only with arts.7(1)(c), 7(3) and 52(2).

Art.7(1)(c) provides:

“7(1) The following shall not be registered:

…

(c)

trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering the service, or other characteristics of the goods or service. ”

Mr Hicks referred primarily to Windsurfing Chiemsee Productions- und Vertriebs GmbH v Boots- und Segelzubehör Walter Huber, Joined Cases C-108/97 and C-109/97, EU:C:1999:230, in which the European Court of Justice (“ECJ”) considered whether a trade mark consisting of the name of a lake in Bavaria was subject to exclusion from registration under art.3(1)(c) of Council Directive 89/104/EEC, the trade mark directive then in force. Art 3(1)(c) is identical in terms to art.7(1)(c) of the Regulation. It is sufficient for me to quote the first operative answer of the ECJ to the question referred (the answer is in the same terms as paragraph 37 of the judgment):

“1.

Article 3(1)(c) of the First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks is to be interpreted as meaning that:

(i)

it does not prohibit the registration of geographical names as trade marks solely where the names designate places which are, in the mind of the relevant class of persons, currently associated with the category of goods in question; it also applies to geographical names which are liable to be used in future by the undertakings concerned as an indication of the geographical origin of that category of goods;

(ii)

where there is currently no association in the mind of the relevant class of persons between the geographical name and the category of goods in question, the competent authority must assess whether it is reasonable to assume that such a name is, in the mind of the relevant class of persons, capable of designating the geographical origin of that category of goods;

(iii)

in making that assessment, particular consideration should be given to the degree of familiarity amongst the relevant class of persons with the geographical name in question, with the characteristics of the place designated by that name, and with the category of goods concerned;

(iv)

it is not necessary for the goods to be manufactured in the geographical location in order for them to be associated with it.”

Mr Hicks also referred to the judgment of the Court of First Instance, Nordmilch eG v OHIM (“OLDENBURGER”), T-295/01, EU:T:2003:267. The Court said (at [43]) that the actual geographical origin of the goods in question does not matter. It is enough that the average consumer perceives the sign in question as an indication of geographical origin. This is consistent with paragraph 1(iv) of the ruling in Windsurfing.

Miss Himsworth referred to Peek & Cloppenburg KG v OHIM, T-379/03, EU:T:2005:373; [2006] ETMR 33. In that case the word mark was CLOPPENBURG for retail services. Cloppenburg is a town in Lower Saxony where the applicant, a supplier of retail services, was based. The Court of First Instance cited Windsurfing and Oldenburger and considered how OHIM should assess a mark alleged to designate a geographical origin within the meaning of art.7(1)(c):

“[38] In making that assessment the Office is bound to establish that the geographical name is known to the relevant class of persons as the designation of a place. What is more, the name in question must suggest a current association, in the mind of the relevant class of persons, with the category of goods or services in question, or else it must be reasonable to assume that such a name may, in the view of those persons, designate the geographical origin of that category of goods or services. In making that assessment, particular consideration should be given to the relevant class of persons’ degree of familiarity with the geographical name in question, with the characteristics of the place designated by that name, and with the category of goods or services concerned (see, by analogy, Windsurfing Chiemsee, paragraph 37 and paragraph 1 of the operative part).”

Miss Himsworth also relied on the judgment of the Court of Appeal in JW Spear & Sons Ltd v Zynga Inc [2015] EWCA Civ 290; [2015] FSR 19, drawing attention to the passage of that judgment in which Floyd LJ, with whom Patten and Tomlinson LJJ agreed, considered (at [73] to [83]) the judgments of the CJEU in Agencja Wydawnicza Technopol sp zoo v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), C-51/10 P, EU:C2011:139; [2011] ETMR 34 and OHIM v Wm Wrigley Jr Co (“DOUBLEMINT”), C-191/01 P, EU:C:1999:230; [2004] RPC 18. Floyd LJ said that the issue under art.7(1)(c) is whether the average consumer would have immediately perceived at the relevant date, without thought or explanation, that the trade mark in issue designated a characteristic of the relevant goods or services.

It important to bear in mind that neither in Spear v Zynga, nor in Technopol or in Doublemint was the court concerned dealing with a mark alleged to designate a geographical origin. It is hard to reconcile a requirement of immediate perception on the part of the average consumer that the mark designates a geographical origin with paragraphs (ii) and (iii) of the ECJ’s answer in Windsurfing.

There is an aspect of considering the validity of a trade mark under art.7(1)(c) or, for that matter, under art.7(1)(b) or (d), which is important in this case.

The date for assessing validity under subparagraphs (1)(b) to (d) of art.7 is the date of filing the application for the Trade Mark, 9 August 2013, see Alcon Inc v OHIM, C-192/03, EU:C:2004:587; [2005] ETMR 69, at [40].

Art.7(1)(b) to (d) are all subject to art.7(3). The date for assessing acquired distinctiveness under art.7(3) is again the date of filing the application for the trade mark in question, see Imagination Technologies Ltd v OHIM, C-572/07 P, EU:2009:362; [2010] ETMR 19, at [41]-[60] and Oberbank AG v Deutscher Sparkassen- und Giroverband eV, Joined Cases C-217/13 and 218/13, EU:C:2014:2012, at [57].

I take first art.7(1)(b). The test for inherent distinctiveness under that paragraph and acquired distinctiveness under art.7(3) is the same. The CJEU set out the test under art.7(1)(b) in Freixenet SA v OHIM, Joined Cases C-344/10 P and C-345/10 P, EU:C:2011:680, at [42]:

“According to settled case-law, for a trade mark to possess distinctive character for the purposes of Article 7(1)(b) of Regulation No 40/94 it must serve to identify the goods in respect of which registration is sought as originating from a particular undertaking, and thus to distinguish those goods from those of other undertakings (see, in particular, Joined Cases C-456/01 P and C-457/01 P Henkel v OHIM [2004] ECR I-5089, paragraph 34; Case C-136/02 P Mag Instrument v OHIM [2004] ECR I-9165, paragraph 29, and Case C-238/06 P Develey v OHIM [2007] ECR I-9375, paragraph 79).”

As will be discussed below, the test for acquired distinctiveness is also whether the trade mark serves to identify the goods or services in respect of which registration is sought (or in respect of which it is registered) as originating from a single undertaking.

Thus, there is only one difference between inherent and acquired distinctiveness: it is that the assessment under art.7(3) permits and requires that the use of the mark in question up to the application date (no further) be taken into account. It follows that use made of the trade mark must be irrelevant to distinctiveness under art.7(1)(b) taken alone.

This is conceptually easy because art.7(1)(b) is all about whether the trade mark is of itself distinctive. The point is less intuitive in the context of art.7(1)(c) and (d), particularly art.7(1)(d). For instance, it could be said that a trade mark could only ever have become customary in the current language of a trade in consequence of its use, (though not as a trade mark). There is no need for me to pursue this. In my view, at the very least, where it is possible to construe paragraphs (1)(b) to (d) in such a way as to give effect to art.7(3), that is the construction to be preferred. Specifically, if the question whether a trade mark designates a geographical origin were to be assessed by reference to matters which included the effect generated by use of the mark up to the application date, art.7(3) could add nothing. It is therefore solely the inherent character of a mark which can be considered in relation to designation of geographical origin within the meaning of art.7(1)(c).

An exception to the foregoing principle – that the effect of use of a trade mark must be ignored when assessing the prohibitions to its registration under art.7(1)(b), (c) and (d) – may apply where the use of the trade mark in question has been in relation to goods or services other than those in respect of which the trade mark is registered, or is sought to be registered, see Audi AG v OHIM, C-398/08 P, EU:C:2010:29; [2010] FSR 24. That does not arise on the facts of this case.

Art.7(3) provides:

“3.

Paragraph 1(b), (c) and (d) shall not apply if the trade mark has become distinctive in relation to the goods or services for which registration is requested in consequence of the use which has been made of it.”

In Windsurfing (cited above) the ECJ considered whether a trade mark consisting of the name of a lake in Bavaria had acquired distinctiveness:

“[47] It follows that a geographical name may be registered as a trade mark if, following the use which has been made of it, it has come to identify the product in respect of which registration is applied for as originating from a particular undertaking and thus to distinguish that product from goods of other undertakings. Where that is the case, the geographical designation has gained a new significance and its connotation, no longer purely descriptive, justifies its registration as a trade mark.

[48] Windsurfing Chiemsee and the Commission are therefore right to assert that Article 3(3) does not permit any differentiation as regards distinctiveness by reference to the perceived importance of keeping the geographical name available for use by other undertakings.

[49] In determining whether a mark has acquired distinctive character following the use made of it, the competent authority must make an overall assessment of the evidence that the mark has come to identify the product concerned as originating from a particular undertaking, and thus to distinguish that product from goods of other undertakings.

[50] In that connection, regard must be had in particular to the specific nature of the geographical name in question. Indeed, where a geographical name is very well known, it can acquire distinctive character under Article 3(3) of the Directive only if there has been long-standing and intensive use of the mark by the undertaking applying for registration. A fortiori, where a name is already familiar as an indication of geographical origin in relation to a certain category of goods, an undertaking applying for registration of the name in respect of goods in that category must show that the use of the mark - both long-standing and intensive - is particularly well established.

[51] In assessing the distinctive character of a mark in respect of which registration has been applied for, the following may also be taken into account: 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, because of the mark, identify goods as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations.

[52] If, on the basis of those factors, the competent authority finds that the relevant class of persons, or at least a significant proportion thereof, identify goods as originating from a particular undertaking because of the trade mark, it must hold that the requirement for registering the mark laid down in Article 3(3) of the Directive is satisfied. However, the circumstances in which that requirement may be regarded as satisfied cannot be shown to exist solely by reference to general, abstract data such as predetermined percentages.

[53] As regards the method to be used to assess the distinctive character of a mark in respect of which registration is applied for, Community law does not preclude the competent authority, where it has particular difficulty in that connection, from having recourse, under the conditions laid down by its own national law, to an opinion poll as guidance for its judgment (see, to that effect, Case C-210/96 Gut Springenheide and Tusky [1998] ECR I-4657, paragraph 37).”

Broadly, therefore, having made an overall assessment taking into account the matters referred to in paragraphs 50 and 51, the tribunal must assess whether at least a significant proportion of the relevant class of persons identifies goods (or services) as originating from a particular undertaking because of the trade mark. If so, that trade mark will have acquired distinctiveness within the meaning of art.3(3) (or art.7(3) of the Regulation, as the case may be). As a matter of EU law the tribunal may have recourse to a public survey, though only if it has particular difficulty in assessing whether a mark has distinctive character and subject to national law.

The ECJ returned to art.3(3) in Koninklijke Philips Electronics NV v Remington Consumer Products Ltd, C-299/99, EU:C:2005:432. The Court first reiterated its ruling in Windsurfing. It continued:

“[63] Second, the distinctive character of a sign consisting in the shape of a product, even that acquired by the use made of it, must be assessed in the light of the presumed expectations of an average consumer of the category of goods or services in question, who is reasonably well-informed and reasonably observant and circumspect (see, to that effect, the judgment in Case C-210/96 Gut Springenheide and Tusky [1998] ECR I-4657, paragraph 31).

[64] Finally, the identification, by the relevant class of persons, of the product as originating from a given undertaking must be as a result of the use of the mark as a trade mark and thus as a result of the nature and effect of it, which make it capable of distinguishing the product concerned from those of other undertakings.”

Thus, the presumed expectations of the average consumer and the perception of (at least a significant proportion of) the relevant class of persons are two sides of the same coin. They are alternative approaches to the same test for acquired distinctiveness: whether, according to those expectations and that perception, as a result of the use of the trade mark in issue as a trade mark, it is capable of distinguishing relevant products from those of other undertakings. See also Mag Instrument Inc v OHIM, C-136/02 P, EU:C:2004:592; [2005] ETMR 46, at [19].

The test for acquired distinctiveness set out in Philips was repeated by the Court of Justice of the European Union (“CJEU”) in Société des Produits Nestlé SA v Mars UK Ltd, C-353/03, EU:C:2005:432, at [26]. The CJEU explained what was meant in paragraph 34 of Philips by the requirement that the identification of the product as originating from a particular undertaking must be as a result of the use of the trade mark in question as a trade mark:

“[29] The expression ‘use of the mark as a trade mark’ must therefore be understood as referring solely to use of the mark for the purposes of the identification, by the relevant class of persons, of the product or service as originating from a given undertaking.”

The law on acquired distinctiveness was reviewed recently by the Court of Appeal in Société des Produits Nestlé v Cadbury UK Ltd [2017] EWCA Civ 358. Nestlé had applied to the UK Intellectual Property Office to register the shape of a four-finger chocolate product – the shape of a Kit Kat – as a trade mark. The Hearing Officer held in a decision dated 20 June 2013 that the trade mark was devoid of inherent distinctive character save for cakes and pastries and that it had not acquired distinctive character in relation to any of the other goods in respect of which registration was sought, most relevantly chocolate goods. An appeal was heard by Arnold J ([2014] EWHC 16 (Ch); [2014] FSR 28) who held that the Trade Mark was not inherently distinctive for any of the goods but he sought a preliminary ruling from the CJEU with regard to acquired distinctiveness. The CJEU delivered its judgment on the reference on 16 September 2015 (C-215/14, EU:C:2015:604). The case was then restored before Arnold J who gave a second judgment on 13 January 2016 ([2016] EWHC 50 (Ch); [2016] FSR 19) in which he found that the trade mark had not acquired distinctiveness and so dismissed the appeal from the Hearing Officer. Nestlé appealed further to the Court of Appeal.

As I have indicated, the appeal raised the question whether a three-dimensional mark consisting of an inherently non-distinctive shape of a Kit Kat had acquired distinctive character. There was a significant complication in that product itself had always been sold in packaging bearing a ‘Kit Kat’ logo, which served as a distinctive badge of origin for the goods. The question was whether the shape of the product, by itself, had also come to serve as a trade mark for the goods and could therefore be registered. The focus of the appeal was thus on matters which do not arise in the present case. However, the Court of Appeal considered more generally what is required to show that a trade mark has acquired distinctiveness through use.

Before turning to the judgment of the Court of Appeal, I will refer first to certain passages in the judgment of the CJEU. The CJEU confirmed that distinctive character, whether intrinsic or acquired, will be assessed by reference to the perception of the relevant class of persons, which will equate with the view of the average consumer:

“[61] That distinctive character must be assessed in relation, on the one hand, to the goods or services covered by that mark and, on the other, to the presumed expectations of the relevant class of persons, that is to say, an average consumer of the category of goods or services in question, who is reasonably well-informed and reasonably observant and circumspect (see, to that effect, judgments in Koninklijke KPN Nederland, C-363/99, EU:C:2004:86, paragraph 34 and the case-law cited therein; Nestlé, C-353/03, EU:C:2005:432, paragraph 25, and Oberbank, C-217/13 and C-218/13, EU:C:2014:2012, paragraph 39).

[62] A sign’s distinctive character, which thus constitutes one of the general conditions to be met before that sign can be registered as a trade mark, may be intrinsic, as provided for in Article 3(1)(b) of Directive 2008/95, or may have been acquired by the use made of that sign, as provided for in Article 3(3) of that directive.”

The CJEU had interpreted (at [58]) the first question referred by Arnold J as asking whether it was sufficient for the applicant for a trade mark to prove that a significant proportion of the relevant class of persons recognise the mark and associate it with the applicant’s goods, or whether the applicant had to go further and prove that the relevant class of persons perceive the goods or services designated exclusively by that mark (i.e. as opposed to any other mark that might be present) as originating from a particular company. The CJEU answered:

“[67] Having regard to those considerations, the answer to the first question is that, in order to obtain registration of a trade mark which has acquired a distinctive character following the use which has been made of it within the meaning of Article 3(3) of Directive 2008/95, regardless of whether that use is as part of another registered trade mark or in conjunction with such a mark, the trade mark applicant must prove that the relevant class of persons perceive the goods or services designated exclusively by the mark applied for, as opposed to any other mark which might also be present, as originating from a particular company.”

If the CJEU’s answer is shorn of the complication of the presence of another trade mark on the goods in question, it was a reiteration of its ruling in Windsurfing and Philips: the relevant class of persons must take the trade mark in suit to mean that the goods or services in respect of which the trade mark is used originate from a single entity. Added, however, was an implied distinction: it is not sufficient if the relevant class of persons recognise the mark and merely associate it with the applicant’s goods.

In the Court of Appeal Kitchin LJ, Floyd LJ and the Chancellor of the High Court all discussed this distinction, largely in the context of the facts of that case.

One issue of general application which arose in argument is whether, in order to satisfy the test for distinctiveness set out by the CJEU, it was necessary to show that consumers had relied on the mark in selecting or purchasing the goods or services in question, or that they have used the mark after purchase to verify that they have chosen the right goods or services. In other words, was it necessary to show that the mark had played a part in consumers’ purchasing or alternatively in their post-transactional behaviour? Kitchen LJ (with whom Floyd LJ and the Chancellor agreed) said this (at [84]):

“… it is legitimate for a tribunal, when assessing whether the applicant has proved that a significant proportion of the relevant class of persons perceives the relevant goods or services as originating from a particular undertaking because of the sign in question, to consider whether such persons would rely upon the sign as denoting the origin of the goods or services if it were used on its own. Further, if in any case it is shown that consumers have come to rely upon the mark as an indication of origin then this will establish that the mark has acquired distinctiveness.”

Thus, reliance on a mark as an indication of origin among a significant proportion of the relevant class of persons will establish that the mark has acquired distinctiveness. However, although reliance is relevant, it is not a precondition to establishing distinctiveness:

“[98] … I accept that it is not necessary to show the public have relied upon the Trade Mark. Such is clear from the decision of the CJEU. But that does not mean to say that evidence of reliance has no part to play. If an applicant for registration of an inherently non-distinctive mark establishes that, as a result of the use which has been made of it, consumers have come to rely upon it as denoting the origin of the goods to which is has been applied, that will show it has become distinctive.”

On the facts the Hearing Officer had been justified in finding that the trade mark had not acquired distinctiveness:

“[89] … The high point for Nestlé is his finding that at least half the people surveyed thought that the picture shown to them was a Kit Kat. But in giving their responses they might have had in mind a product coming from the same source as Kit Kat or a product of the Kit Kat type or a product which looked like a Kit Kat. The hearing officer was therefore entitled and indeed bound to consider the results in light of all of the other evidence before him. I am also satisfied he was entitled to conclude as he did that Nestlé had shown recognition and association of the shape with Kit Kat but had failed to prove that the shape (and hence the Trade Mark) had acquired a distinctive character in light of the use which had been made of it.”

Floyd LJ said this:

“[108] If it is the case that consumers have in fact come to rely on the shape as an indicator or trade origin, that would certainly be sufficient for acquired distinctiveness. It is, however, not a necessary precondition that consumers should have in fact so relied, and regarding it as such a precondition could conceivably lead to error. The ultimate question is whether the mark, used on its own, has acquired the ability to demonstrate exclusive origin. It would be unwise to attempt a list of the ways in which this can be demonstrated.”

The Chancellor agreed with Kitchin and Floyd LJJ, and emphasised that the criterion for establishing the distinctiveness of a trade mark – proving a perception that a trade mark signifies that the goods or services come from a single undertaking – had to be understood in the light of earlier dicta of the CJEU, namely that this perception must arise as a consequence of the use of the mark as a trade mark:

“[117] Thus, the perception required by the simple test extracted from paragraph 67 of the CJEU’s decision is a qualified kind of perception. The test in paragraph 67 is that the applicant must prove that the relevant class of persons perceive the goods designated exclusively by the mark applied for as originating from a particular company. The perception that is required is perception that arises in consequence of the use of the mark as a trade mark and thus as a result of the nature and effect of it, which make it capable of distinguishing the product concerned from those of other undertakings. I have used the words transported from the Philips case, through the Mars case and into the CJEU’s decision.” (original emphasis)

The Chancellor indicated that a mark would be taken to have been used as a trade mark by the public if consumers have come to rely on it as indicating the origin of the goods. He referred, with apparent approval, to paragraph 90 of Richard Arnold QC’s decision in Vibe Technologies Limited’s Application [2009] ETMR 12:

“[119] … In that passage, Mr Arnold had said that he did not think it was essential for the applicant to have explicitly promoted the sign as a trade mark. It was sufficient for the applicant to have used the sign in such a way that consumers have come to rely on it as indicating the origin of the goods. Mr Arnold concluded, correctly I think, that ‘On the other hand, if the applicant has explicitly promoted the sign as a trade mark, it is more likely that consumers will have come to rely upon it as indicating the origin of the goods’.”

Since the Chancellor expressly agreed with Kitchin and Floyd LJJ, I do not understand that passage to mean that it is necessary for the average consumer to have relied on the sign as indicating the origin of the goods for it to have been used as a trade mark. Something other may suffice.

In Powerserv Personalservice GmbH v OHIM, C-553/08 P, EU:C:2009:745, the CJEU held (at [60]) that acquired distinctive character is established under art.7(3):

“… only if evidence is provided that it has acquired, through the use which has been made of it, distinctive character in the part of the Community in which it initially had descriptive character for the purposes of Article 7(1)(c) (see, to that effect, Case C-25/05 P Storck v OHIM, paragraph 83).”

I will attempt to draw together the principles arising from the foregoing authorities on acquired distinctiveness under art.7(3) which are relevant to this case:

So far as I am aware, the CJEU has never expressly stated either who qualifies as the ‘relevant class of persons’ in the context of art.7(3) or what will amount to significant proportion of such persons, beyond saying that the tribunal must not rely on predetermined percentages (see Windsurfing at [52]). As will become apparent, it matters in the present case.

In The Sofa Workshop Ltd v Sofaworks Ltd [2015] EWHC 1773 (IPEC); [2016] FSR 3, having reviewed the case law, I said this in the context of infringement of a trade mark pursuant to art.9(1)(b) of the Regulation:

“[109] Thus, in relation to whether there is a likelihood of confusion and therefore infringement of a trade mark under art.9(1)(b), the view of the average consumer provides the benchmark. The average consumer’s view can be taken to be consistent with the view of a significant proportion of relevant actual consumers. Relevant actual consumers are those to whom the mark is an indication of origin of the relevant goods or services and who are in addition reasonably well-informed, reasonably circumspect and observant.”

It seems to me that if what I described there as ‘relevant actual consumers’ are taken to be the ‘relevant class of persons’, an analogy can be drawn. The relevant class of persons consists of actual consumers who have the characteristics of the average consumer in a particular case. They will be always reasonably well-informed, reasonably circumspect and observant. In addition they will have the further characteristics of the average consumer arising from the particular facts of the case. I consider the attributes of the average consumer in these proceedings below.

The CJEU has held that a trade mark has distinctive character if a significant proportion of the relevant class of persons perceives goods designated by the mark as originating from a single undertaking (Windsurfing at [52]). On the other hand, the size of the proportion with that perception is one of the factors the tribunal may take into account when reaching a conclusion on acquired distinctiveness (Windsurfing at [51]). This implies that the smallest proportion which still qualifies as a significant proportion is markedly greater than de minimis.

In the context of infringement, a significant proportion of relevant consumers may be less than half, see Interflora Inc v Marks & Spencer (Interflora II) [2014] EWCA Civ 1403; [2015] FSR 10, at [103].

Maintaining the analogy with infringement, I infer that a significant proportion of relevant persons in the context of art.7(3) means a proportion markedly above de minimis but not necessarily over half.

Art.52(1) so far as is relevant and art.52(2) provide as follows:

“1.

An EU trade mark shall be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings:

(a)

where the EU trade mark has been registered contrary to the provisions of Article 7;

…

2.

Where the EU trade mark has been registered in breach of the provisions of Article 7(1)(b), (c) or (d), it may nevertheless not be declared invalid if, in consequence of the use which has been made of it, it has after registration acquired a distinctive character in relation to the goods or services for which it is registered. ”

There is no reason to doubt that ‘distinctive character’ in art.52(2) has the same meaning as in art.7(3), so the law will be the same for both. The difference is that art.52(2) also takes into account use of the mark after registration. The question raised by art.52(2) is whether by a relevant date after registration the trade mark has acquired distinctiveness through use, namely the date on which the party seeking a declaration of invalidity filed its application, see Mondelez UK Holdings & Services Ltd v European Union Intellectual Property Office, T-112/13, EU:T:2016:735, at [76] and the cases there stated. In the present instance that means the date of the counterclaim, see The Sofa Workshop at [61] and London Taxi Corp Ltd v Fraser-Nash Research Ltd [2016] EWHC 52 (Ch); [2016] FSR 20, at [179].

The date of the counterclaim is 7 March 2016.

The question whether ‘Sivec’ designated a geographical origin of marble at the two relevant dates is to be assessed through the eyes of the average consumer. It was agreed that here the average consumer was a specialist dealer in marble or a person who advises their customers on the choice of materials to be used in a building, such as an architect or designer of interiors. Miss Himsworth emphasised that the average consumer came from within the EU, so this excluded Macedonia.

In my judgment, the flaw in Fox’s argument with regard to the inherent character of the Trade Mark under art.7(1)(c) was that it took into account use of the Trade Mark to support the argument. For the reasons discussed above, I think that the use made of the Trade Mark, both before and after registration, was irrelevant to whether art.7(1)(c) applied. Fox had to show that the Trade Mark inherently denoted a geographical origin to the average consumer.

I accept that Sivec is a real place not far from either Mermeren’s or Fox’s quarry. But it is a very obscure place. In evidence it emerged that no one will have heard of Sivec except, presumably, those who lived somewhere near the Sivec mountain pass. These are not relevant persons or even people in the EU. Jonathan Mitchell, an employee of Fox, accepted that those who purchase marble would not have known of Sivec the place. Mr Hicks did not subsequently suggest that the average consumer would have heard of it.

This was fatal to Fox’s case under this head. If the average consumer has never heard of a place the name of that place cannot inherently designate a geographical origin in the mind of the average consumer. The only possible way such a designation could have arisen for the average consumer was by use of the name in the EU, which must be disregarded. This is consistent with what the CJEU said in Peek & Cloppenburg at [38], quoted above. I therefore reject Fox’s argument in relation to art.7(1)(c) taken alone.

I turn to the effect of use of the Trade Mark on the average consumer’s perception – firstly up to the date of filing the application for the Trade Mark, 9 August 2013.

Mr Hicks argued that one had to begin by looking at the position in the years between 1950 when Mermeren was founded and 2011. During this time, as had been the case for many years previously, it was commonplace for marble to be named by reference to the locality from which it is quarried. He referred to Carrara marble by way of a well-known example: a generic name used for marble quarried near Carrara in northern Tuscany. Sivec is a real place near to Mermeren’s quarry. It would have been reasonable for the average consumer to have assumed that denoted the geographical origin of marble of that name.

Mr Hicks continued that this would have been the state of affairs all the way up to 2011 because, he said, up until then no effort was taken by Mermeren to suggest to the public that the Sivec name was attached to one supplier of marble. The only documents available were invoices recording marble being sold as ‘Sivec’ marble, or ‘Bianco Sivec’ or various grades of ‘Sivec’ marble. These were consistent with and likely to reinforce the idea that Sivec was a type of marble. He also relied on the evidence of Mr Charles and Mr Russell, which I will come back to.

In April 2009 NGBI Private Equity purchased Mermeren from its previous owner. In 2011 Mermeren recruited Ilias Rigopoulos as Chief Operating Officer. He was promoted to Chief Executive Officer in April 2012, a post he held until April 2015. Mr Hicks said that it was Mr Rigopoulos who saw that the Sivec name should be tied to Mermeren. He organised the production of a corporate branding manual that was first published by Mermeren in 2011. It was only from 2011 that there appears any document in which ‘Sivec’ is used as a brand name for Mermeren, thus suggesting that it designates a single commercial source of marble. But, Mr Hicks argued, in the short period from 2011 until 9 August 2013 the perception of the average consumer could not have been dislodged. It would take longer than two years to overcome the inertia of presumption among the relevant class of persons that types of marble are identified by the place from which they come and that this was true of Sivec marble.

There were three assumptions smuggled into this argument.

The first was that if a trade mark is inherently distinctive, by which I mean that it does not fall foul of any of subparagraphs 1(b)-(d) of art.7, a party may rely on art.7(3) to show that use of the mark has rendered it non-distinctive. On a straightforward reading of art.7 that is not correct. Paragraph (3) comes into play only if any of subparagraphs 1(b), (c) or (d) apply. In other words, an inherently distinctive mark can never be vulnerable to an allegation that it has lost distinctiveness through use, at least not pursuant to art.7(3).

Continuing with this possible construction of the Regulation, it would remain the case that if in consequence of the use of the mark by or with the consent of the proprietor (but no one else) the mark becomes liable to mislead the public, the mark may be revoked pursuant to art.51(1)(b).

Jumping ahead, it seems to me that the same point could be said to arise in the context of art.52(2): art.52(2) is only engaged if the trade mark was registered in breach of any of art.7(1)(b) to (d) in the first place.

This matters, of course, because I have found that the Trade Mark was inherently distinctive.

That said, it was not a point raised by either counsel, partly because neither addressed the question whether the assessment under art.7(1)(c) taken alone must exclude the effect of use of the Trade Mark. I think it would be unfair for me to reach any concluded view on the point without having heard argument.

Importantly, had the question whether Fox was entitled to rely on art.7(3) or art.52(2) been raised by Miss Himsworth, I imagine that Mr Hicks may have directed his attention to Fox’s case under art.51(1)(b). Although he said nothing about it in oral argument he did not formally abandon Fox’s pleaded case which relied on that provision.

I will therefore consider both art.7(3) and art.52(2) on the assumption that they are engaged and that use of the Trade Mark before and after its application date must be taken into account. I need not go on to consider Fox’s case under art.51(1)(b), given Mr Hicks’ concession that it stands or falls with Fox’s argument on art.7(1)(c) and acquired distinctiveness through use.

The second assumption contained within Mr Hicks’ argument was that use of a real place name in association with a type of marble can generate the perception that the name designates a geographical origin even if the average consumer has never heard of the name qua geographical location – i.e. even if the average consumer just assumes that it is somewhere on the map but does not know this to be true.

In my view the average consumer could acquire a relevant perception in that way. When it comes to the consequences of the use of a sign, it is the perception of the average consumer generated by that use that counts, not the reality, see Oldenburger at [43] and paragraph 1(iv) of the ruling in Windsurfer referred to above. According to Mr Hicks’ account of what happened, perception coincided with reality. I think that reality was by the way; perception was what mattered.

Thirdly, it was a necessary part of Mr Hicks’ argument that by August 2013 Mr Rigopoulos may have persuaded some relevant persons that ‘Sivec’, when used in relation to marble, designated that the marble came from a single undertaking, but that he had not persuaded all of them. As will be seen, I accept Mr Hicks’ account to the extent that I have come to the view that as of August 2013 use of the Trade Mark by Mermeren had led some relevant persons in the real world to think that it meant the place from which the marble was quarried; others had moved on to think that it meant marble quarried and/or supplied by Mermeren. There was probably a third group of relevant persons who gave the matter no thought beyond ‘Sivec’ being a type of marble. The question was: how does trade mark law deal with the frequently messy reality of what relevant persons believe?

I therefore asked Mr Hicks what the tipping point was: what proportion of relevant persons had to have been converted to the perception Sivec marble came only from Mermeren in order that pursuant to art.7(3) the Trade Mark overcame the prohibition under art.7(1)(c)? Mr Hicks submitted that the matter should be approached the other way around: if a significant proportion of the relevant persons believed, in August 2013, that ‘Sivec’ denoted a geographical origin when used in relation to marble, that was sufficient for the Trade Mark to have been invalidly registered. Miss Himsworth was equivocal.

For the reasons discussed above, I do not accept Mr Hicks’ submission. In line with what was said by the Court of Justice in Windsurfing, if it was shown that in August 2013 at least a significant proportion of relevant persons perceived that the Trade Mark, when used in relation to marble, identified it as originating from a single undertaking, the Trade Mark was validly registered pursuant to art.7(3). As earlier indicated, I take a significant proportion to mean markedly above de minimis but not necessarily over half.

Both sides relied on what witnesses had to say about the perception of the average consumer in August 2013 and March 2016 and also on documentary evidence.

Fox had three witnesses. Jonathan Mitchell has been employed by Fox since July 2015. He said that his role is essentially that of a consultant operations director advising on the company’s operations, including those in Macedonia. Mr Mitchell is a former employee of the Foreign and Commonwealth Office, with expertise in the Balkan region.

Mr Mitchell said that Fox adopted the name Sivec for its marble using local terminology for marble derived from that area. He provided local documents to back this up. They were of no assistance, however, because Macedonia is not in the EU and local knowledge is irrelevant to the perception of the EU average consumer.

In his witness statement Mr Mitchell discussed the marble market in general terms, suggesting that ‘Sivec’ had a geographical meaning in that market. But in cross-examination he conceded that he could only speak with authority of the view that would be taken by someone from the EU who was an expert in geography. That was not the average consumer.

Russell Jones runs his own company, Russell Jones Limited, providing architectural and design consultancy services. He was familiar with many types of marble used for decorating the interiors and exteriors of buildings. In his witness statement Mr Jones said that it is well known in the UK and in the rest of the EU that Sivec is the name for white marble from a specific geographic area. However, this was just an assertion, not backed up with any supporting evidence. He had never specified Sivec marble himself for a project, which cast doubt on his having thought a great deal about what ‘Sivec’ designated before this action.

Mr Jones had a tendency to argue Fox’s case when answering questions in cross-examination. He was of the opinion that Mermeren was, as he put it, “laying claim to a generic material”. From the point of view of a buyer of marble this would be financially disadvantageous. It is possible that this affected his view of what ‘Sivec’ has come to mean.

That possibility was reinforced during the cross-examination of Stephen Charles. Mr Charles has worked in the construction industry for about 48 years and is a specialist in decorative surfaces. He founded a business specialising in decorative stone and ceramics and more recently has operated a similar business under his own name.

Mr Charles was a reluctant witness, uncomfortable giving evidence in a courtroom. He declared at the end of his cross-examination that he had found it very distressing. Presumably in consequence of his distress Mr Charles frequently did not focus on the questions put to him. He stated candidly right at the start of his cross-examination that his primary purpose in attending the trial was to defend his industry. It was a theme he returned to. He believed that Mermeren was trying to monopolise a type of marble, a practice he had seen before and which he had found to have been extremely dangerous for the industry and even to have led to criminality. I don’t doubt that Mr Charles honestly holds these beliefs. I can say nothing one way or the other about their accuracy. But Mr Charles’ fervent expression of them led me to think that his views on the meaning of ‘Sivec’ were probably coloured by his wish that Mermeren should not have a monopoly in the name. Like Mr Jones, Mr Charles has never personally specified Sivec marble for a project.

Mermeren also fielded three witnesses. I have already mentioned Ilias Rigopoulos. He joined Mermeren in 2010 as Chief Operating Officer and became CEO in April 2012, remaining in that post until April 2015. He then moved on to become CEO of another company. A significant part of his evidence was that in 2011 an exclusive distribution agreement which Mermeren had had with a distributor of its marble came to an end. Thereafter Mermeren worked with three other distributors and, as Mr Rigopoulos put it, “this enabled Mermeren to have complete control over management of the brand.” Part of this complete control was to indicate to the public that ‘Sivec’ was a trade mark designating products supplied by Mermeren.

Theodoras Malfas was formerly an investment director of a private equity fund called ‘NBGI’. NBGI bought Mermeren from a Greek company in April 2009. Mr Malfas was responsible for the due diligence undertaken in respect of Mermeren. He gave evidence about the marble market drawn in particular from that time.

Finally, there was evidence on behalf of Mermeren from Dimitris Chatzis, who was cross-examined with the assistance of an interpreter. Mr Chatzis is the managing director of a company that specialises in sourcing stone, in particular marble, from various producers and then marketing these materials. Mr Chatzis explained his experience of the marble industry drawn from the last 30 years. Mr Chatzis said that he had known of Sivec marble since 2000. He said that at first he did not know who produced Sivec marble or whether the name was a brand name or whether it designated the place from which it came. He said that he had come to regard ‘Sivec’ to be a brand name belonging to Mermeren, used for marble from the Prilep region of Macedonia, but it was not clear whether he knew this before his first visit to the quarry in 2013.

Although I am sure that all the witnesses were doing their best to help the court, I found the documentary evidence more reliable on the question of the average consumer’s perception of the Trade Mark at the relevant dates.

The only documents that provide any evidence of what the average consumer in the EU might have thought before 2011 are invoices recording sales to customers in the EU. These sometimes referred to the marble to be delivered as ‘Sivec’ marble, although often qualified as ‘Bianco Sivec’, or ‘Sivec A’ or ‘Sivec C’ and so on. All the invoices were from Mermeren.

Until Fox began supply marble under the Sivec name in 2014, Mermeren was the sole user of the name for marble, save for very small supplies made by a company called Uni Gran Mer in about 2000. These came from a quarry about 50km from Mermeren’s and Fox’s concessions. Mr Rigopoulos said that the supplies from Uni Gran Mer were so small that they did not come to Mermeren’s attention until 2011 and that they have now stopped. This was not challenged. No relevant paperwork from Uni Gran Mer was in the case.

Mermeren’s invoices were all headed – in either Cyrillic or Roman script – ‘MERMEREN KOMBINAT – PRILEP’, in almost all cases with both names followed by an ‘®’ sign. In a few instances, below that heading there appeared ‘BIANCO SIVEC®, BELA POLA®, ONYX AMBRA®, CHASHKA®’.

I think a reasonably well-informed, reasonably circumspect and observant reader of the invoices would have inferred that ‘Bianco Sivec’ was a registered brand name owned by Mermeren, as was ‘Mermeren’ itself and that the three other brand names were also trade marks.

‘Sivec’ stands conspicuously in contrast. It appeared only in the body of the invoices, i.e. that part specifying the order as opposed to being part of the standard form invoice, and was never marked to suggest that it was a trade mark.

Mr Rigopoulos said in cross-examination that Mermeren’s customers treated ‘Sivec’ as an abbreviated version of ‘Bianco Sivec’ and therefore perceived Sivec to be a trade mark too. He pointed out that ‘bianco’ is well known to be Italian for ‘white’, so customers would have regarded ‘Sivec’ as the trade mark. That is plausible, but it was an assertion without any contemporary evidence to back it up. Inconsistent with it is the fact that Mermeren filed applications for ‘Bianco Sivec’ in many territories in 1998 but it was not until 2011, and then only in Macedonia, that Mermeren filed to protect ‘Sivec’ as a trade mark. An international application followed in October 2012.

It is likely that at least up to 2011 the average consumer in the EU did not treat the use of ‘Sivec’ by Mermeren as use of the sign as a trade mark. Therefore the sign could not have acquired distinctive character in law before 2011. No doubt ‘Sivec’ was a sign closely associated with Mermeren. That was not enough.

Beyond that, the likelihood is that relevant persons split into two camps. Some would have assumed that ‘Sivec’ must be a place somewhere in Macedonia which had given its name to a type of white marble. Others, because they did not actually know of a place called Sivec, would have thought that it was just a name given to a type of marble.

This would have been the perception of relevant persons up to 2011; the Trade Mark was not distinctive within the meaning of that word in art.7(3) – assuming, of course, that art.7(3) is engaged and that use of the mark can be taken into account.

I would add this. I do not accept Mr Hicks’ submission that relevant persons in 2011 would have been so entrenched in their views that such views would have taken years to shift. On the contrary, I doubt that relevant persons would have given a great deal more than cursory thought to whether ‘Sivec’ was a type of marble, a place, or whether anyone other than Mermeren was entitled to supply Sivec marble. The interests of relevant persons would have been focussed on quality, price and time for delivery. If subsequent information reached them, it would not have taken much to convince them that ‘Sivec’ had trade mark significance.

Mr Rigopoulos’ evidence was that from 2010 onwards Mermeren placed a particular focus on the advertising and promotion of the ‘Sivec’ mark. This of itself says nothing because the effect of the focussed use depends on how it was done.

A corporate identity manual was created in 2011 which provided guidelines as to how Mermeren’s various brand names and trade marks were to be presented to the world. ‘Sivec’ is shown in a particular typeface with an ® sign attached.

The evidence at trial included pictures of Mermeren’s stands at trade fairs in Turkmenistan in August 2011 and 2012, Dubai in November 2011 and Xiamen (China) in March 2012 and 2013. None of these was in the EU but Mr Chatzis said that visitors travel long distances to attend these trade fairs, singling out the Xiamen trade fair as one attended by a great many visitors from Europe. Mr Rigopoulos described the Xiamen exhibition as one of the two leading fairs in the stone industry. The photographs show very prominent use of the mark SIVEC, used more prominently than MERMEREN. In Xiamen Mermeren was stated to be “The Owner of the SIVEC Marble Quarry”. At Dubai and Xiamen SIVEC was marked with the ® sign.

Of greater significance, Mermeren had a stand at the Marmomacc Exhibition in Verona in September 2012. This was important not only because it was in the EU; Mr Rigopoulos described it as the most highly-attended and widely recognised event in the marble trade. The photographs of the September 2012 event exhibited suggested that BIANCO SIVEC was given prominence, rather than SIVEC. However, Mr Rigopoulos’ unchallenged evidence was that at Verona in 2012, 2013, 2014 and 2015 Mermeren’s marble was displayed under both the SIVEC and BIANCO SIVEC names and that the ® sign was used in relation to both marks. Mr Malfas said the same thing and this was not challenged either.

Brochures were distributed each year at Verona, although those shown to me featured BIANCO SIVEC as Mermeren’s trade mark.

Taking all this into account, in my view by August 2013 a significant proportion of relevant persons, certainly markedly above de minimis and probably higher than that, had come to believe that ‘Sivec’ was a trade mark owned by Mermeren, signifying that marble marked with that name came from a single undertaking. By that date the Trade Mark had acquired distinctiveness within the meaning of art.7(3).

The proportion of relevant persons holding that belief can only have increased in the period August 2013 to March 2016 and indeed thereafter. This will have been because of the continuing efforts by Mermeren to educate the public that ‘Sivec’ was a registered mark owned by Mermeren, supported by the efforts in this period from Mermeren’s distributors. There was nothing to suggest that use of the Trade Mark by Fox has been on a scale to make a significant difference.

The Trade Mark was validly registered in August 2013; the registration was not contrary to any of the prohibitions to registration contained in art.7(1)(b) to (d).

If arts.7(3) and 52(2) have no application in law, there is nothing further to be considered.

Alternatively, if arts.7(3) and 52(2) are engaged, the Trade Mark did designate a geographical origin by 2010, but this was reversed through use in the period between 2011 and August 2013. By 9 August 2013, the date relevant for the application of art.7(3), the Trade Mark was distinctive. It remained distinctive up to 7 March 2016, the date relevant for the application of art.52(2).

The Trade Mark was and remains validly registered and there are no grounds for its revocation.