Case No. IP-2015-000146

47.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:(1)The overall criterion which governs whether a trade mark has acquired distinctive character is whether the average consumer perceived that trade mark identified the relevant goods or services as originating from a single undertaking. (The average consumer, as ever, is reasonably well-informed, reasonably observant and circumspect.)(2)This perception is to be assessed as of the date of filing the application for registration of the trade mark.(3)The perception of the average consumer in (1) is to be distinguished from the circumstance in which the average consumer recognised the mark and associated it with the applicant’s goods; such recognition and association is not of itself sufficient to confer distinctive character on a trade mark.(4)The average consumer will be taken to have perceived that the trade mark identified the goods or services as originating from a single undertaking if at least a significant proportion of the relevant class of persons had that perception.(5)Such a perception must have arisen in consequence of the use of the mark as a trade mark. That will be more easily established if the proprietor explicitly promoted it as a trade mark.(6)When making its assessment of the distinctive character of a trade mark, the tribunal may take the following into account: (i) the market share held by the mark; (ii) how intensive, geographically widespread and long-standing use of the mark has been; (iii) the amount invested by the undertaking in promoting the mark; (iv) the proportion of the relevant class of persons who, because of the mark, identify goods as originating from a particular undertaking; and (v) statements from chambers of commerce and industry or other trade and professional associations.(7)If the tribunal is in difficulty in making that assessment, as a matter EU law it may have recourse to a public survey, subject to national rules.(8)It is legitimate for a tribunal to consider whether a significant proportion of the relevant class of persons would have relied on the sign as denoting the origin of the goods or services. Such reliance is not a precondition for establishing the distinctive character of a trade mark, but if established it is sufficient to show that the mark has distinctive character.(9)In relation to a trade mark consisting of a geographical name, regard must be given to the specific nature of the name. Where the name was very well known, it could have acquired distinctive character only if there had been long-standing and intensive use of the mark by the proprietor. A fortiori, where a name was already familiar as an indication of geographical origin in relation to the relevant category of goods, the proprietor must show that the use of the mark – both long-standing and intensive – was particularly well established.(10)Distinctive character must be established in the part of the EU in which it initially had descriptive character for the purposes of Article 7(1)(c).