Case No. IP-2015-000146

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. Three assumptions 65.There were three assumptions smuggled into this argument. Use of the Trade Mark 66.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).67.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).68.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.69.This matters, of course, because I have found that the Trade Mark was inherently distinctive.70.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.71.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.72.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. Whether actual knowledge of a geographical place is necessary under art.7(3) 73.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.74.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. The messy reality of what relevant persons think 75.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?76.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.77.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. The evidence 78.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. The witnesses Mr Mitchell 79.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.80.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.81.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. Mr Jones 82.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.83.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. Mr Charles 84.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.85.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. Mr Rigopoulos 86.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.