The matter at hand

On 16 May 2014, Basic Net applied for an EU figurative mark, consisting of three vertical coloured stripes for goods in classes 18, 25 and 26. The application was refused by EUIPO on the ground that the figurative mark lacked distinctive character in its entirety.

The First Board of Appeal confirmed the refusal, considering that Basic Net had failed to demonstrate that the figurative mark had gained distinctiveness through use in the entire EU. The General Court dismissed the appeal, finding that Basic Net had only proven acquired distinctiveness in four Member States (UK, Italy, France and the Netherlands), which was considered insufficient.

Basic Net subsequently brought the case before the ECJ, relying on the plea that in light of the Lindt & Sprüngli judgment (C-98/11 P) acquired distinctiveness only had to be proven for a ‘substantial part of the EU’, and not for each separate Member State.

The judgment of the ECJ

The ECJ dismisses the plea of Basic Net, relying heavily on its judgment in EUIPO v. Nestle (C-84/17 P) of only two months earlier. In this judgment, the ECJ ruled that acquired distinctiveness must be proven for the entire EU and not just a (significant) part thereof, albeit not necessarily be providing separate proof for each individual Member State (as certain proof could demonstrate acquired distinctiveness in multiple Member States).

Applying this principle to the case at hand, the ECJ concludes that the General Court did not err in law by considering the evidence submitted for the UK, Italy, France and the Netherlands to be insufficient to demonstrate acquired distinctiveness for the entire EU. The ECJ further notes that an affidavit stating that distinctiveness had been acquired in Belgium, Germany, Austria, Spain and Hungary does not constitute convincing evidence. Moreover, no evidence at all had been submitted with regard to the remaining 15 Member States, nor had Basic Net claimed acquired distinctiveness in these Member States.