Acquired Distinctiveness

Question 1

Name the two steps to demonstrating AD for unconventional marks

Answer 1

1. Apply Windsurfing as usual

2. Apply the KitKat test

Question 2

Name the authority that being inherently distinctive (in a sales sense) isn’t necessarily the same as being inherently distinctive in a TM sense

Answer 2

Yakult

Question 3

When will a shape mark be inherently distinctive?

Answer 3

If:

1. It departs significantly from the norms of the sector; and
2. It functions as a trade mark (essential function - badge of origin)

(Henkel)

Question 4

Is AD for a shape mark a high hurdle?

Answer 4

Yes - Coca Cola

Question 5

What is the test for acquired distinctiveness?

Answer 5

Based on the use of the sign as a TM, does a SIGNIFICANT PROPORTION of the relevant public perceive that mark [as opposed to any other mark present] as denoting that the goods/services originate from a particular undertaking?

Need RELIANCE/PERCEPTION, not just ASSOCIATION

Question 6

For EU marks, where must distinctive character/acquired distinctiveness be shown?

Answer 6

The WHOLE EU with an extrapolation caveat:

• need QUANTITATIVE SUFFICIENCY plus GEOGRAPHICAL REPRESENTATION
• can group countries together to submit ‘chunks’ of evidence, as long as the markets are fairly comparable and can explain why (Bet365, KitKat)

Question 7

For an EU mark, does the territory where distinctiveness must have been acquired depend on the language of the mark?

Answer 7

Yes - Sofa Workshop. So a higher threshold for marks in English.