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2.51 According to Article 7 (1) (b)-(d) CTMR registration of a mark must be refused if the conditions of these provisions are met. This has been interpreted by OHIM to mean that the conditions must not only be fulfilled on the filing date, but also continue to be fulfilled on the date when the decision on registration is taken. This was perceived to be in line with Article 52 (2) CTMR according to which a mark that has obtained distinctiveness through use after registration cannot be declared invalid. In consequence of this approach it was considered by OHIM to be sufficient for refusing registration to show absence of distinctiveness or descriptiveness at the time that the decision was taken. However, the ECJ in a recent decision (Case C-332/09 P – OHIM/Frosch Touristik) has held that the only relevant date is the filing date, which seems to mean that a mark that has lost its distinctiveness after the filing date or that has become descriptive after that date cannot be refused.

2.52 Protection on the basis of acquired distinctiveness is regulated in Article 7 (3) CTMR and Article 3 (3) TMD. Registration of a trade mark shall not be refused, or be liable to a declaration of invalidity, on the ground of Article 7 (1) (b), (c) and (d) CTMR or Article 3 (1) (b) (c) and (d) TMD if the mark has acquired distinctive character in consequence of the use which has been made of it. The TMD specifies that the provision is mandatory when distinctiveness has been acquired prior to the date of application for registration. In addition, Member States may also provide that the trade mark is registrable if distinctiveness has been acquired in-between application and registration, or after registration.

II. Case law

2.53 As regards the first issue, the relevant date for assessing distinctiveness or descriptiveness, the ECJ recently confirmed a General Court judgment which had been appealed by OHIM, in view of its constant practice referred to above (Court Order of 23 April 2010, Case C-332/09 P – OHIM/Frosch Touristik).

2.54 As regards the second issue, the ECJ has confirmed that the present wording of Article 7 (3) CTMR does not allow any other interpretation than what is observed in practice by OHIM, namely that distinctiveness must have been acquired before the

date of application (Case C-542/07 P – Imagination Technologies Ltd/OHIM, para 60).

III. Opinions

2.55 The relevant date for assessing (acquired) distinctiveness was rarely brought up as a topic during the consultations. However, being asked about their position regarding possible changes in the CTMR, it was signalled by members of the Appeal Boards at OHIM that it would be acceptable to switch to the date of registration as the relevant date for assessing protectability, including acquired distinctiveness, if it remained assured that this would not be to the detriment of third parties.

2.56 Apart from that, acquired distinctiveness was addressed with a view to a possible relaxation of the present requirements for CTM registration of signs which are non- distinctive throughout the Community. This will be addressed under another topic (Chapter 3 B).

IV. Issues

2.57 As regards the time for assessing protectability in general, an approach requiring to disregard developments between the filing date and the date when the decision on registration is taken does not appear in line with the principle that the absolute grounds for refusal must be assessed in the light of the general interest which underlies each of them. This general interest has to be taken into consideration at the time of the decision on registration. An examination of the protectability limited to the filing date could lead to the registration of marks which at the time of registration are not registrable, and which thereafter cannot be invalidated because loss of distinctiveness or descriptiveness are not grounds for invalidation. The only ground for invalidation on account of post-registration developments is the development of the mark to a common name for the product pursuant to Article 51 (1) (b) CTMR. Also, as regards judging registrability, the tasks of examiners is easier if focussed on the time when the decision is taken rather than on the earlier time when the application was filed, even though the actual perception of the mark by the relevant public may not have changed between these dates.

2.58 As regards acquired distinctiveness, the differences existing at present between the CTMR and national laws with regard to the relevant date for assessment of distinctive character create unequal conditions for protection within the EU. The legal rule applying with regard to the issue should be clear and uniform on the national as well as on Community level. The present practice observed by OHIM is dissatisfactory as it disregards the dynamism of market effects resulting from trade mark use, which may lead to changes in the perception and awareness of the public within months. If it is not possible for the applicant to prove the degree of acquired distinctiveness at a time which follows the application date, a new application must be filed, which entails additional costs and burdens for the applicant, and reduces the efficiency of proceedings. On the other hand, the interests of third parties should not suffer from the possibility to take account of

acquired distinctiveness after the date of application. This could be ensured by postponing the relevant date from the date of application to the date for which acquired distinctiveness has been established with the Office, without the need to file a new application. Legal certainty as regards the relevant date can be ensured by a registration and publication of the date as of which acquired distinctiveness was established, which will then become the filing date for purposes of establishing which of conflicting rights is earlier. If distinctiveness has been acquired after registration, the trade mark cannot be declared invalid (Article 52 (2) CTMR). Rights which were acquired by third parties during the time when the registered trade mark was not distinctive are to be treated as “intervening rights”, meaning that they cannot be opposed on the basis of the prior trade mark. The issue of “intervening rights” is dealt with in a different context (see Chapter 2 I ). 2.59 Article 7 (3) CTMR also raises an issue with regard to the geographical breadth of

the area for which distinctiveness needs to be established. This is of particular importance for trade marks which are considered non-distinctive throughout the EU, such as shape of product marks or colours per se. The issue is addressed under another topic (Chapter 3 B).

V. Proposals

2.60 It should be clarified either in the Preamble or in Article 7 (1) CTMR and Article 3 (1) TMD that the relevant date for assessing the absolute grounds for refusal is the date when the decision on registration is taken. The requirements of distinctiveness, absence of descriptiveness and genericness must also be examined as of the filing date.

2.61 Article 7 (3) CTMR and Article 3 (3) TMD should be amended so as to provide for the possibility to establish acquired distinctiveness at a date subsequent to the application date, and prior to the date of registration. In that case, the filing date, which is the date taken into account in determining conflicts between marks, should be adjusted accordingly.

E. Use requirement