Keywords
Summary

Keywords

1. Community trade mark - Definition and acquisition of the Community trade mark - Signs of which a trade mark may consist - Condition - Distinctive character - Assessment in relation to the goods or services for which registration applied for

(Council Regulation No 40/94, Art. 4)

2. Community trade mark - Definition and acquisition of the Community trade mark - Absolute grounds for refusal - Trade marks which consist exclusively of signs or indications which may serve to designate the characteristics of a product - Term Giroform

(Council Regulation No 40/94, Art. 7(1)(c))

3. Community trade mark - Definition and acquisition of the Community trade mark - Previous registration of the mark in certain Member States - Effect

4. Community trade mark - Appeals procedure - Actions before the Community judicature - Jurisdiction of the Court of First Instance - Directions to OHIM - Excluded

(Council Regulation No 40/94, Art. 63(6))

Summary

1. It follows from Article 4 of Regulation No 40/94, which provides that the decisive factor if a sign capable of being represented graphically is to be eligible for registration as a Community trade mark is its capacity to distinguish the goods of one undertaking from those of another, that that distinctive character can be assessed only in relation to the goods or services in respect of which registration of the sign is applied for.

( see paras 18-19 )

2. By providing in Article 7(1)(c) of Regulation No 40/94 on the Community trade mark that trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service are not to be registered, it was the legislature's intention that such signs should, by their very nature, be regarded as incapable of distinguishing the goods of one undertaking from those of another.

With regard to the application for registration in respect of paper, cardboard and goods made from those materials, not included in other classes; printed matter, of the word Giroform, the latter is not capable of constituting a Community trade mark, since it informs consumers of the intended purpose of the products. The words giro and form, used together, designate in financial institution circles a printed form relating to bank payment transactions for debiting a customer's account. The fact that the product in respect of which registration of the trade mark was applied for can be used to print other sorts of forms does not invalidate that conclusion. The fact that the sign Giroform consists of one word and begins with a capital letter whereas the expression giro form consists of two words and in English is normally written in lower-case letters does not amount to evidence of any creative aspect capable of distinguishing the applicant's products from those of other undertakings.

( see paras 20-21, 24-25 )

3. Where application is made for registration of a sign as a Community trade mark, the Office for Harmonisation in the Internal Market (Trade Marks and Designs) is not bound by the registration of that sign as a trade mark in several Member States. Having regard to the unitary character of the Community trade mark, registrations already made in the Member States are a factor which may only be taken into consideration, without being given decisive weight, for the purposes of registering a Community trade mark.

( see paras 26-27 )

4. Where an appeal is brought before the Community judicature against a decision of one of the Boards of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs), the Office is required, in accordance with Article 63(6) of Regulation No 40/94, to take the measures necessary to comply with the judgment of the Court of Justice. Accordingly, the Court of First Instance is not entitled to issue directions to the Office.

( see para. 33 )