Mermeren Kombinat AD v Fox Marble Holdings Plc [2017] EWHC 1408 (IPEC) (14 June 2017)

Mermeren Kombinat AD v Fox Marble Holdings Plc [2017] EWHC 1408 (IPEC) (14 June 2017)

The mark 'SIVEC' was not inherently descriptive of geographical origin to the relevant EU average consumer at the filing date, as Sivec was an obscure location unknown to them. The evidence showed that, by the relevant dates, a significant proportion of relevant persons perceived 'SIVEC' as identifying marble...

Source-derived case information.

Citation
[2017] EWHC 1408 (IPEC)
Parties
Claimant: Mermeren Kombinat AD; Defendant: Fox Marble Holdings PLC
Jurisdiction
England and Wales
Judgment Date
14 June 2017
Procedural Posture
Trade Mark Infringement and Invalidity Counterclaim / Judgment After Trial
Outcome
Claim succeeded; counterclaim dismissed
Legal Topics
EU Trade Mark Regulation, Geographical Indications, Acquired Distinctiveness, Trade Mark Infringement, Invalidity and Revocation
Intellectual Property Trade Marks EU Trade Mark Regulation Geographical Indications Acquired Distinctiveness Trade Mark Infringement Invalidity and Revocation

Source-derived case record

Summary, issues, holding and outcome

More case intelligence is available

Unlock the full research layer for this judgment.

Full judgment text Downloadable case file Legal principles 5 Authorities cited 31 Party arguments 2
Sign in to unlock

Parties

Mermeren Kombinat AD

Claimant

Fox Marble Holdings PLC

Defendant

Procedural Posture

Trade Mark Infringement and Invalidity Counterclaim / Judgment After Trial

Legal Issues

  1. 1 Whether the trade mark 'SIVEC' is inherently distinctive or designates geographical origin under Article 7(1)(c) of the Regulation
  2. 2 Whether the trade mark 'SIVEC' had acquired distinctiveness under Article 7(3) and/or Article 52(2)
  3. 3 Whether the trade mark should be declared invalid or revoked

Ratio Decidendi

The mark 'SIVEC' was not inherently descriptive of geographical origin to the relevant EU average consumer at the filing date, as Sivec was an obscure location unknown to them. The evidence showed that, by the relevant dates, a significant proportion of relevant persons perceived 'SIVEC' as identifying marble originating from Mermeren, thus the mark had acquired distinctiveness through use. The trade mark was validly registered and not liable to invalidity or revocation.

Court Disposition

Claim succeeded; counterclaim dismissed

Orders

  • Declaration that the 'SIVEC' trade mark is valid and not liable to invalidity or revocation
  • Dismissal of Fox Marble's counterclaim