Mermeren Kombinat AD v Fox Marble Holdings Plc

Mermeren Kombinat AD v Fox Marble Holdings Plc

The trade mark 'SIVEC' was not inherently descriptive of geographical origin to the average EU consumer, as Sivec was an obscure place unknown to relevant persons. By the relevant dates, a significant proportion of the relevant class of persons perceived 'SIVEC' as a trade mark identifying marble from a single undertaking (Mermeren), due to focused use and promotion. Therefore, the mark was validly registered and had acquired distinctiveness under Article 7(3); there were no grounds for revocation or invalidity.

Parties
Claimant: Mermeren Kombinat AD; Defendant: Fox Marble Holdings PLC
Jurisdiction
England and Wales
Judgment Date
14 June 2017
Procedural Posture
Intellectual Property (trade Mark) Infringement and Counterclaim for Invalidity/revocation / Judgment After Trial
Outcome
Claim allowed; counterclaim dismissed.
Legal Topics
Trade Mark Validity, Acquired Distinctiveness, Geographical Indications, Revocation of Trade Marks, Distinctive Character, Average Consumer Test
Intellectual Property Trade Mark Law European Union Law Trade Mark Validity Acquired Distinctiveness Geographical Indications Revocation of Trade Marks Distinctive Character +1 more

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Parties

Mermeren Kombinat AD

Claimant

Fox Marble Holdings PLC

Defendant

Procedural Posture

Intellectual Property (trade Mark) Infringement and Counterclaim for Invalidity/revocation / Judgment After Trial

Legal Issues

  1. 1 Whether the trade mark 'SIVEC' was inherently distinctive or designated geographical origin under Article 7(1)(c) of Council Regulation (EC) No. 207/2009
  2. 2 Whether the trade mark had acquired distinctiveness under Article 7(3)
  3. 3 Whether the trade mark should be revoked or declared invalid under Articles 51(1)(b) and 52(2)

Ratio Decidendi

The trade mark 'SIVEC' was not inherently descriptive of geographical origin to the average EU consumer, as Sivec was an obscure place unknown to relevant persons. By the relevant dates, a significant proportion of the relevant class of persons perceived 'SIVEC' as a trade mark identifying marble from a single undertaking (Mermeren), due to focused use and promotion. Therefore, the mark was validly registered and had acquired distinctiveness under Article 7(3); there were no grounds for revocation or invalidity.

Court Disposition

Claim allowed; counterclaim dismissed.

Orders

  • Declaration that the 'SIVEC' trade mark is validly registered and not liable to revocation or invalidity.
  • Dismissal of Fox Marble Holdings PLC's counterclaim for invalidity and revocation.