Mermeren Kombinat AD v Fox Marble Holdings Plc
Decision date: 14 June 2017
Neutral citation: [2017] EWHC 1408 (IPEC)
Overall AI summary confidence: high
Short overview
This short overview is intended to summarise the case, issues and outcome so far as they are supported by the judgment.
AI confidence in this short overview: high
This case concerned the validity of the EU trade mark SIVEC for marble, challenged by Fox as descriptive/geographical and otherwise invalid. The court found "Sivec" was not inherently perceived by the EU specialist average consumer as a geographical indication, and that by the filing date (9 Aug 2013) and by 7 Mar 2016 the mark had acquired distinctiveness through use by Mermeren. The registration was held valid and Fox's invalidity and revocation counterclaims failed.
Ratio decidendi
This summary is intended to identify the ratio decidendi, meaning the legal reasons for deciding and the binding part of the decision.
AI confidence in this ratio decidendi summary: high
An obscure place-name unknown to the relevant class of EU (specialist) consumers is not inherently a geographical indication under Art.7(1)(c); acquired distinctiveness under Art.7(3) (and distinctiveness under Art.52(2)) must be assessed as of the relevant date and can be established where a significant proportion of the relevant class (meaning markedly above de minimis, not necessarily a majority) perceives the sign as indicating origin from a single undertaking.
Obiter dicta
This summary is intended to identify obiter dicta, meaning observations made by the way that were not necessary to deciding the case and are not binding.
AI confidence in this obiter dicta summary: high
The judgment suggests the tribunal may consider Art.7(3) and Art.52(2) even if not fully pleaded, that focused promotion can produce relatively rapid shifts in trade perception for specialist goods, and that documentary evidence may be more reliable than interested industry witness evidence when assessing average-consumer perception.