Marks which designate a geographical origin cannot be registered if the geographical name is known to the relevant class of people as the designation of a place, and if it suggests (or could suggest) a current association with the goods or services. However, a mark may acquire distinctiveness through use where the average consumer perceives the mark as identifying the goods or services as originating from a single undertaking. If a geographical name is very well known, it can only acquire distinctive character if the owner has made long-standing and intensive use of the mark.
In Mermeren v Fox Marble, the IPEC decided that Mermeren's mark for SIVEC was inherently distinctive. Mermeren extracts and sells marble from the Prilep region of Macedonia, including from a quarry near the small village of Sivec. It owns an EU trade mark for SIVEC in relation to marble. Fox, a UK company, also extracts and sells marble from the Prilep region, also under the mark "Sivec".
The relevant public, i.e. those in the EU who purchased marble, would not have heard of Sivec (as it is a little-known place), and so it did not inherently designate the geographical origin of the goods. Further, even if the mark, through its use in the period prior to registration, did designate the marble's geographical origin, by the time Mermeren applied for its trade mark, this had been reversed by use. This case demonstrates that, in certain circumstances, it is possible to acquire distinctiveness, and turn a mark from being a geographical descriptor into a trade mark (in this case in a period of two years, which is quite a low threshold).
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
