- Alert: IPEC upholds validity of SIVEC trade mark (Mermeren v Fox)
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IP analysis: The Intellectual Property Enterprise Court has upheld the validity of an EU trade mark registration for SIVEC, registered in respect of ‘marble of all types’, among other related goods. The validity of the mark was challenged by a competitor which sold marble under the sign ‘Sivec’, in the context of a trade mark infringement action. Sivec is the name of a mountain pass in the region of the Republic of Macedonia (a country that is not a member of the EU) and is near to the site where the trade mark proprietor extracts its marble, and where one of its competitor’s quarries is located. The judgment contains a detailed review of the recent case law on acquired distinctiveness, and considers the criteria that must be met in order for a trade mark to be deemed to indicate the geographical origin of a product. The court held that the mark was validly registered in August 2013 and was not contrary to the prohibitions to registration contained in Regulation (EC) 207/2009, Articles 7(1)(b) to 7(1)(d). It held that, if Regulation (EC) 207/2009, Articles 7(3) and 52(2) had no application in law, there was nothing further to be considered. However, it went on to consider the position in the alternative, if they were engaged. It held, based on the evidence, that the contested trade mark did designate a geographical origin by 2010, but that this was reversed through use in the period between 2011 and August 2013. The trade mark was distinctive by 9 August 2013 (the date relevant for assessment of distinctiveness acquired through use pursuant to Article 7(3)) and remained so up to 7 March 2016 (the date relevant for assessment of distinctiveness acquired through use pursuant to Article 52(2)). Accordingly, there were no grounds for revocation.
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