In a long running battle Getty Images just lost its bid to trademark the term Photos.com with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM).
On September 15th 2009, Getty Images (US), Inc. , filed an application for registration of a Community trademark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) on the word mark PHOTOS.COM.
On August 2nd, 2010, the examiner refused the application for registration on the grounds that the mark applied for was descriptive and devoid of distinctive character.
On September 23, 2010, Getty lodged with OHIM a notice of appeal against the examiner’s decision to refuse registration of the mark.
On April 6th 2011 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the appeal pointed out that the addition of the element ‘.com’ to a descriptive sign cannot make it eligible for registration as a Community trademark.
“The Board of Appeal found that, in the absence of any additional distinctive elements, the sign lacks distinctive character, because it merely indicates that the goods and services covered, or further information concerning those goods and services, can be obtained on-line from the website www.photos.com, but does not enable the commercial origin of the goods and services to be identified”.
“The Board of Appeal also found that the fact that the applicant is the holder of a domain name which corresponds to the trademark application at issue does not confer on it any right to claim protection under the EU legislation on the Community trademark”.
“Lastly, the Board of Appeal found that the applicant had failed to establish that the sign applied for had acquired distinctive character through the use which has been made of it, for the goods and services covered and in relation to the English-speaking part of the European Union”.
“The Board of Appeal noted that the evidence produced by the applicant in order to establish that the mark applied for had acquired distinctive character through use, for the purposes of Article 7(3) of Regulation No 207/2009, related almost exclusively to the use of the domain name ‘photos.com’ and did not demonstrate that the relevant public perceives the sign at issue as a trademark”.
Getty then appealed again this time to the The General Court (Fifth Chamber)
The General Court in a decision dated November 21, 2012 once again rejected Getty’s arguements and denied the trademark on the term Photos.com
“The applicant claims, in essence, that the Board of Appeal erred in finding that the mark applied for was devoid of distinctive character for the purposes of Article 7(1)(b) of Regulation No 207/2009.
It submits, in that respect, that the Board of Appeal disregarded the fact that the application for the Community mark corresponds to the domain name previously registered by the applicant. According to the applicant, domain names – which are, in fact, exclusive – enable the origin of the goods or services covered by a mark to be clearly identified and, accordingly, Article 7(1)(b) of Regulation No 207/2009 is not applicable to them.”
“Settled case-law establishes that the distinctiveness of a trade mark for the purposes of Article 7(1)(b) of Regulation No 207/2009 means that the mark in question makes it possible to identify the goods or the services for which registration is sought as originating from a given undertaking and accordingly to distinguish the goods or services from those of other undertakings, and that the mark is therefore able to fulfil the essential function of the trademark”
“The distinctive character of a mark must be assessed, first, by reference to the goods or services in respect of which registration is sought and, second, by reference to the perception of the relevant public ”
“In the present case, it should be noted, first, that the Board of Appeal found – without being contradicted on that point by the applicant – that, as the sign at issue is intelligible both in English and in French, it is appropriate, in assessing the distinctive character of that sign, to focus on the English- and French-speaking parts of the European Union. In addition, since that sign can also be understood in other languages of the European Union, the Board of Appeal correctly found that the vast majority of the inhabitants of the European Union would understand its meaning. Furthermore, the Court confirms the Board of Appeal’s assessment that, in the light of the goods and services covered by the Community trade mark application, the relevant public is made up of both professionals and the public at large”.
“Accordingly, the targeted public by reference to which the existence of an absolute ground for refusal must be assessed is the average consumer in the European Union, drawn both from the general public and from professional circles and deemed to be reasonably well-informed, observant and circumspect, although the level of attention which can be expected from a professional is inevitably higher”.
“Secondly, it should be pointed out that – as the Board of Appeal observed – the mark applied for is composed of the term ‘photos’, which is an informal abbreviation of the word ‘photographie’ in French or ‘photograph’ in English, in its plural form, and the element ‘.com’, which constitutes an extension of a domain name in so far as it is a generic TLD. ”
“Consequently, as the Board of Appeal observed, without being contradicted by the applicant, the sign at issue reproduces the characteristic structure of a domain name and will be perceived as such by the relevant public”
“In addition, it should be noted that the two components of the sign at issue, taken individually, are devoid of intrinsic distinctive character. In particular, the Court upholds the Board of Appeal’s assessment that the first component of the sign, namely the word ‘photos’, immediately informs the relevant public that the goods and services covered by the application are related to photography or have photography as their subject matter. It follows that that element is devoid of distinctive character in relation to the goods or services concerned”.
“As regards the element ‘.com’, it is important to note that this will immediately be recognised by the relevant public as referring to an internet site. ”
“In that respect, it should be pointed out that – as the Board of Appeal noted in its assessment – it is a technical and generic element, the use of which is required in the normal structure of the address of a commercial internet site.”
“Furthermore, the element ‘.com’ may also indicate that the goods and services covered by the trademark application can be obtained or viewed on-line, or are internet-related. Accordingly, the element in question must also be considered to be devoid of distinctive character in respect of the goods or services concerned”.
“It follows from the foregoing that the sign applied for is made up of a combination of commonplace or technical elements which are not capable of distinguishing the applicant’s goods and services from those of other undertakings. Each of those elements is, therefore, devoid of distinctive character in respect of the goods or services concerned. ”
“Although the applicant does not dispute that the trademark application concerns a word mark which constitutes a neologism, it nevertheless maintains that the fact that the neologism is a domain name means that there is a perceptible difference between that neologism and the sum of its two components.
“In the absence of special characteristics peculiar to the sign at issue, the relevant public’s perception of that sign will be no different from its perception of the combination of the two words comprising the sign. ”
“It follows that, as the Board of Appeal rightly pointed out, the relevant public will not be able to distinguish the goods and services covered by the trade mark application from goods and services of a different commercial origin. Consequently, the sign is devoid of distinctive character”.”
In the present case, even though the mark applied for also indicates a domain name, it must first be observed that in view of its characteristics – in particular, its structure, the lack of distinctiveness of its components and the fact that it is a word mark – the relevant public will immediately perceive the sign applied for as the domain name for an internet site where photos can be downloaded, and not as indicating the commercial origin of the goods and services concerned. ”
“That finding is supported by the fact that, as the average consumer is no more than reasonably attentive, if the sign does not immediately indicate to him the origin of the goods or service designated, but merely gives him purely promotional, abstract information, he will not take the time either to think about the sign’s various possible functions or to see it as a trademark
“Secondly, a distinction must be drawn between rights derived from the registration of a domain name, on the one hand, and rights derived from the registration of a sign as a Community trademark, on the other. ”
“Accordingly, the fact that the applicant owns the domain name ‘photos.com’ does not mean that, as a consequence, that name can be registered as a Community trademark.”
“The applicant refers to the fact that the consumer merely has to enter the name of the sign at issue on any internet browser – without having to enter the internet address of its website – to be directed to its website www.photos.com and to have access to those goods and services. ”
“However, the applicant’s contention that this proves that the sign indicates the commercial origin of the goods and services offered on its website must be rejected as unfounded. ”
“The distinctive character of a mark which corresponds to a domain name cannot be assessed by reference to the steps taken by an internet user to access the goods or services covered by the trademark application and available on the internet, but – by reference to the goods or services in respect of which registration is sought and to the perception of the relevant public. “:
“Besides, the applicant’s argument must be rejected in any event as ineffective in that it does not call into question the Board of Appeal’s assertion that the sign in itself does not enable the specific commercial origin of the goods and services covered to be identified, because the relevant public will perceive it as a source of information for goods related to photography which are accessible on the internet”.
“In the light of the foregoing, it must be held that the Board of Appeal was entitled to find that, from the point of view of the relevant public, the word sign PHOTOS.COM is devoid of distinctive character for the purposes of Article 7(1)(b) of Regulation No 207/2009 as regards the goods and services concerned.”
“It is also apparent from the case-law that, for a mark to have acquired distinctiveness through use, it is necessary that at least a significant proportion of the relevant public can, by virtue of that mark, identify the goods or services concerned as originating from a particular undertaking. ”
“Contrary to the applicant’s claims, and as the Board of Appeal noted, the statements from third parties contained in those press articles, concerning the possibility for ‘users to buy individual images from its vast library of stock photos on PHOTOS.COM’, do not make it possible to determine whether they concern a trademark or the website on which those photos are available.”
“For the same reason, it is necessary to reject the applicant’s argument that the mere statement ‘photo credit: Photos.com’ in newspapers and on internet sites intended for the European public – from which the applicant produced extracts – demonstrates that the relevant public will recognise the commercial origin of the goods and services covered and will attribute this to the mark applied for”.
“The applicant has provided no evidence of distinctiveness acquired through use in relation to English- and French‑speaking EU consumers. ”
“It must be held that – as the Board of Appeal correctly pointed out – the evidence produced by the applicant relates almost exclusively to the use of the domain name ‘photos.com’. However, use of the sign at issue other than as a trade mark does not constitute proof of distinctive character acquired through use. Furthermore, the applicant has not demonstrated that the use made of the mark applied for has been representative, such as to show the market share held by the applicant, by virtue of that mark, in the English-speaking parts of the European Union”.