A trademark must have distinctive character in order to be registered.
This requirement can also be acquired later because of the use made of the trademark but the conditions for this to happen are rather strict as taught by the Court of Justice of the European Union in its judgment of 6 September 2018 in case C-547/17 P dismissed the appeal brought by a company in Turin that was rejected the trademark for lack of distinctive capacity.
The company had, in fact, submitted to EUIPO (European Union Office for Intellectual Property) an application for registration of the following figurative mark
for products in Classes 18, 25 and 26, but the examiner rejected that trademark application as lacking in distinctiveness.
The Board of Appeal, contacted by the applicant company to challenge the findings of the examiner, confirmed the decision that not only was the mark devoid of any “intrinsic” distinctive character (formerly Article 7(1)(b) of Regulation No 207/2009), but the applicant company also failed to prove that the mark had acquired such distinctive character through usage.
The Turin company really demonstrated the acquisition of the distinctive capacity of the figurative mark in as many as four Member States of the European Union whose total population constituted about 40% of the population of the EU and this should have been, in his opinion, enough to demonstrate a distinctive character acquired through use in a significant part of the EU and therefore allow the registration of the mark.
On the other hand, the Court of Justice in order to confirm the judgment pronounced by the Court was of a different opinion and ruled that
Although it is not necessary, for the purposes of registering, on the basis of Article 7(3) of Regulation No 207/2009, a mark that is, ab initio, devoid of distinctive character throughout all the Member States of the European Union, that evidence be submitted, in respect of each individual Member State, of the acquisition by that mark of distinctive character through use, the evidence submitted must be capable of establishing such acquisition throughout the Member States of the European Union. (Judgment of 25 July 2018, Société des produits Nestlé and Others v. Mondelez UK Holding & Services, C 84/17 P, C 85/17 P and C 95/17 P, EU:C:2018:596, paragraph 83).
And more, it’s written in the sentence: (…) with regard to a mark that is, ab initio, devoid of distinctive character across all Member States, such a mark can be registered pursuant to that provision only if it is proved that it has acquired distinctive character through use throughout the territory of the European Union (Judgment of 25 July 2018, Société des produits Nestlé and Others v. Mondelez UK Holding & Services, C 84/17 P, C 85/17 P and C 95/17 P, EU:C:2018:596, paragraph 76, and the case law cited therein).
Therefore, having acquired distinctiveness only in part of the Union is not enough to be able to obtain the mark because the usage must concern all Member States and not only part of them.