In a long running battle Getty Images just lost its bid to trademark the term Photos.com with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM).
On September 15th 2009, Getty Images (US), Inc. , filed an application for registration of a Community trademark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) on the word mark PHOTOS.COM.
On August 2nd, 2010, the examiner refused the application for registration on the grounds that the mark applied for was descriptive and devoid of distinctive character.
On September 23, 2010, Getty lodged with OHIM a notice of appeal against the examiner’s decision to refuse registration of the mark.
On April 6th 2011 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the appeal pointed out that the addition of the element ‘.com’ to a descriptive sign cannot make it eligible for registration as a Community trademark.
“The Board of Appeal found that, in the absence of any additional distinctive elements, the sign lacks distinctive character, because it merely indicates that the goods and services covered, or further information concerning those goods and services, can be obtained on-line from the website www.photos.com, but does not enable the commercial origin of the goods and services to be identified”.
“The Board of Appeal also found that the fact that the applicant is the holder of a domain name which corresponds to the trademark application at issue does not confer on it any right to claim protection under the EU legislation on the Community trademark”.
“Lastly, the Board of Appeal found that the applicant had failed to establish that the sign applied for had acquired distinctive character through the use which has been made of it, for the goods and services covered and in relation to the English-speaking part of the European Union”.
“The Board of Appeal noted that the evidence produced by the applicant in order to establish that the mark applied for had acquired distinctive character through use, for the purposes of Article 7(3) of Regulation No 207/2009, related almost exclusively to the use of the domain name ‘photos.com’ and did not demonstrate that the relevant public perceives the sign at issue as a trademark”.
Getty then appealed again this time to the The General Court (Fifth Chamber)
The General Court in a decision dated November 21, 2012 once again rejected Getty’s arguements and denied the trademark on the term Photos.com
“The applicant claims, in essence, that the Board of Appeal erred in finding that the mark applied for was devoid of distinctive character for the purposes of Article 7(1)(b) of Regulation No 207/2009.…
