Keywords
Summary

Keywords

1. Community trade mark – Definition and acquisition of the Community trade mark – Absolute grounds for refusal – Interpretation in the light of the general interest relating thereto – Article 7(1)(c) of Regulation No 40/94 – Objective – Need to leave a sign or indication free

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

2. Community trade mark – Definition and acquisition of the Community trade mark – Absolute grounds for refusal – Measure of overlap between the scope of the grounds set out in Article 7(1)(b) and of those set out in Article 7(1)(c) of Regulation No 40/94

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

3. 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 or service – Definition – Signs composed exclusively of numerals

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

4. Community trade mark – Effects of the Community trade mark – Limitations – Article 12(b) of Regulation No 40/94 – Purpose

(Council Regulation No 40/94, Art. 7(1)(c), and 12(b))

5. Community trade mark – Decisions of OHIM – Principle of equal treatment – Principle of sound administration – Previous decision-making practice of OHIM

Summary

1. Each of the grounds for refusal listed in Article 7(1) of Regulation No 40/94 on the Community trade mark must be interpreted in the light of the general interest underlying it. The general interest underlying Article 7(1)(c) of that regulation is that of ensuring that descriptive signs relating to one or more characteristics of the goods or services in respect of which registration as a mark is sought may be freely used by all traders offering such goods or services.

With a view to ensuring that that objective of free use is fully met, in order for the Office for Harmonisation in the Internal Market (Trade Marks and Designs) to refuse to register a sign on the basis of Article 7(1)(c) of Regulation No 40/94, it is not necessary that the sign in question actually be in use at the time of the application for registration in a way that is descriptive. It is sufficient that the sign could be used for such purposes. By the same token, the application of that ground for refusal does not depend on there being a real, current or serious need to leave a sign or indication free, and it is therefore of no relevance to know the number of competitors who have an interest, or who might have an interest, in using the sign in question. It is, furthermore, irrelevant whether there are other, more usual, signs than that at issue for designating the same characteristics of the goods or services referred to in the application for registration. It follows from the foregoing that the application of Article 7(1)(c) of that regulation does not require the sign at issue to be the usual means of designation.

(see paras 36-40)

2. The descriptive signs referred to in Article 7(1)(c) of Regulation No 40/94 on the Community trade mark are also devoid of any distinctive character for the purposes of Article 7(1)(b) of that regulation. Conversely, a sign may be devoid of distinctive character for the purposes of Article 7(1)(b) for reasons other than the fact that it may be descriptive. There is therefore a measure of overlap between the scope of Article 7(1)(b) of Regulation No 40/94 and the scope of Article 7(1)(c) of that regulation, Article 7(1)(b) being distinguished from Article 7(1)(c) in that it covers all the circumstances in which a sign is not capable of distinguishing the goods or services of one undertaking from those of other undertakings.

In those circumstances, it is important for the correct application of Article 7(1) of Regulation No 40/94 to ensure that the ground for refusal set out in Article 7(1)(c) of that regulation duly continues to be applied only to the situations specifically covered by that ground for refusal.

(see paras 46-48)

3. The situations specifically covered by the ground for refusal set out in Article 7(1)(c) of Regulation No 40/94 on the Community trade mark are those in which the sign in respect of which registration as a mark is sought is capable of designating a ‘characteristic’ of the goods or services referred to in the application. By using, in Article 7(1)(c) of that regulation, the terms ‘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’, the legislature made it clear, first, that the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service must all be regarded as characteristics of goods or services and, secondly, that that list is not exhaustive, since any other characteristics of goods or services may also be taken into account.

The fact that the legislature chose to use the word ‘characteristic’ highlights the fact that the signs referred to in Article 7(1)(c) of Regulation No 40/94 are merely those which serve to designate a property, easily recognisable by the relevant class of persons, of the goods or the services in respect of which registration is sought. Consequently, a sign can be refused registration on the basis of Article 7(1)(c) of Regulation No 40/94 only if it is reasonable to believe that it will actually be recognised by the relevant class of persons as a description of one of those characteristics.

Those specific points are of particular relevance as regards signs which are composed exclusively of numerals. Given that such signs are generally equated with numbers, one of the things that they can do, in trade, is to designate a quantity. Nevertheless, in order for a sign which is composed exclusively of numerals to be refused registration on the basis of Article 7(1)(c) of Regulation No 40/94 on the ground that it designates a quantity, it must be reasonable to believe that, in the mind of the relevant class of persons, the quantity indicated by those numerals characterises the goods or services in respect of which registration is sought.

(see paras 48-52)

4. The rule set out in Article 12(b) of Regulation No 40/94 on the Community trade mark does not have a decisive bearing on the interpretation of the rule set out in Article 7(1)(c) of that regulation. Article 12 of that regulation concerns the limits on the effects of a Community trade mark, whereas Article 7 of that regulation relates to the grounds for refusal to register signs as marks.

The fact that Article 12(b) of Regulation No 40/94 ensures that every trader may freely use indications relating to the characteristics of goods and services in no way limits the scope of Article 7(1)(c) of that regulation. On the contrary, that fact clearly discloses the need for the ground of refusal set out in Article 7(1)(c) of Regulation No 40/94 to be actually applied to any sign which may designate a characteristic of the goods or the services in respect of which its registration as a mark is sought.

(see paras 59-61)

5. The Office for Harmonisation in the Internal Market (Trade Marks and Designs) is under a duty to exercise its powers in accordance with the general principles of Union law, such as the principle of equal treatment and the principle of sound administration.

In the light of those two principles, OHIM must, when examining an application for registration of a Community trade mark, take into account the decisions already taken in respect of similar applications and consider with especial care whether it should decide in the same way or not.

(see paras 73-74)