Case No. IP-2015-000146

9.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.10.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.11.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.12.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).