Let Me Put You in the Picture – Trade Marks Must Be Distinctive

A recent decision has confirmed that, in order for a trade mark to be registered, the mark must be distinctive and not merely descriptive of the goods and services to which it relates.

Getty Images, the global media giant, uses the mark “PHOTOS.COM” in connection with one of its websites.  In 2009, Getty attempted to register “PHOTOS.COM” as a (European) Community Trade Mark, but the application was refused on the basis that the mark was devoid of distinctive character.

Following an unsuccessful appeal at the OHIM (the EU trade mark office), Getty took the matter to the General Court of the European Union.  The court has backed the stance taken by the OHIM and so Getty will not be able to register the trade mark.

In my view, this is a sensible decision and I would have been surprised at any other outcome.  Members of the public should be able to distinguish the goods and services covered by a registered trade mark from those provided by another entity, and affording registered protection to such a generic term would have eroded that fundamental principle.

If you are developing a brand, take advice early on to ensure that it can be effectively protected and exploited.

Kirk Dailly
Associate
Business – Corporate & Commercial Law

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