Keywords
Summary

Keywords

1. Community trade mark - Definition and acquisition of the Community trade mark - Absolute grounds for refusal - Marks composed exclusively of signs or indications which may serve to designate the characteristics of a product - Objective - Need to leave a sign or indication free - Scope of the examination

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

2. Community trade mark - Definition and acquisition of the Community trade mark - Application for registration of a sign for all services within a category - Appraisal of the descriptive character of the sign in the light of the services as a whole

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

3. Community trade mark - Definition and acquisition of the Community trade mark - Absolute grounds for refusal - Marks composed exclusively of signs or indications which may serve to designate the characteristics of a product - Signs devoid of any distinctive character - TELE AID

(Council Regulation No 40/94, Art. 7(1)(b) and (c) and (2))

4. Community trade mark - Definition and acquisition of the Community trade mark - Absolute grounds for refusal - Marks composed exclusively of signs or indications which may serve to designate the characteristics of a product - Appraisal of the descriptive character of a sign - Consideration only of the categories of goods and/or services covered by the application for registration

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

Summary

1. Article 7(1)(c) of Regulation No 40/94 on the Community trade mark, which prohibits the signs and indications therein referred to from being reserved to one undertaking alone because they have been registered as trade marks, pursues an aim which is in the public interest, namely that descriptive signs or indications may be freely used by all. Application of that provision does not depend on there being a real, current or serious need to leave a sign free so that it is necessary only to consider, on the basis of a given meaning of the sign in question, whether, from the point of view of the intended public, there is a sufficiently direct and specific association between the sign and the categories of goods and services in respect of which registration is sought.

( see paras 24, 27-28 )

2. Where registration of a sign as a Community mark is applied for, without any distinction being drawn, for a category of services in its entirety and that sign is not descriptive of all the services in that category, the ground for refusal referred to in Article 7(1)(c) of Regulation No 40/94 nevertheless applies to that sign for the whole category concerned.

( see para. 34 )

3. Article 7(1)(c) of Regulation No 40/94 on the Community trade mark provides that trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality ... intended purpose ... of the goods or of rendering of the service, or other characteristics of the goods or service are not to be registered. Furthermore, Article 7(2) of Regulation No 40/94 provides that paragraph 1 shall apply notwithstanding that the grounds of non-registrability obtain in only part of the Community.

With respect to registration of the term TELE AID for Repair services for automobiles; vehicle repair Mobilising and coordination of accident and rescue services, Towing and rescue services and Computing services for determining vehicle location, that term, taken as a whole, must be deemed to be capable of designating both the kind and the quality of those services, given that they represent specific forms of aid. The fact that the aid is provided at a distance must also be considered to be a quality of the services that the class of persons targeted is liable to take into account when making a choice and accordingly constitutes an essential characteristic thereof. Therefore, from the point of view of the class of persons targeted, there is a sufficiently direct and concrete association between the term TELE AID and those services, with the result that it is covered by the prohibition imposed by the aforementioned provisions.

With respect to registration of the term TELE AID in respect of Car emergency telephone systems, the intended use of those goods must be considered to coincide partially with the description of that category of goods in that it expressly refers to emergency call systems. Goods that enable emergency calls to be made may serve to enable the services that provide assistance to be summoned from a distance. To that extent the intended use of those goods is for remote assistance and, accordingly, there is, from the point of view of the relevant class of persons, a sufficiently direct and concrete association between the term TELE AID and those goods, with the result that it is covered by the prohibition in question.

However, as regards registration of that term for Electrical and electronic devices for transferring speech and data; stationary and mobile transmission, relay and audio receivers and devices; data processing equipment and parts therefor; navigation devices, and for the categories of service listed as: Operation of a communications network and Collection, storage, processing and output of information, it has not been established that the term may serve to indicate their intended purpose. Remote assistance, even if it requires or involves the use of those goods and services, represents at most one of many possible areas of use thereof, not a technical function, which does not suffice to conclude that there is a sufficiently direct and concrete association between the term TELE AID and the goods and services in question from the point of view of the relevant class of persons. Moreover, it has not been established that the term TELE AID is not distinctive, within the meaning of Article 7(1)(b) of Regulation No 40/94, for those goods and services.

( see paras 33, 35, 39, 55 )

4. The descriptiveness of a word sign within the meaning of Article 7(1)(c) of Regulation No 40/94 on the Community trade mark must be assessed individually by reference to each of the categories of goods and/or services listed in the application for registration. For the purposes of assessing the descriptiveness of a word sign in respect of a particular category of goods and/or services, whether the applicant for the trade mark in question is contemplating using or is actually using a particular marketing concept involving goods and/or services in other categories in addition to the goods and/or services within that category is immaterial. First, whether or not there is a marketing concept is of no consequence to the right conferred by the Community trade mark and, second, since a marketing concept is purely a matter of choice for the undertaking concerned, it may change after a sign has been registered as a Community trade mark and it cannot therefore have any bearing on the assessment of the sign's registrability.

( see para. 42 )