Keywords
Summary

Keywords

1. Community trade mark – Definition and acquisition of the Community trade mark – Absolute grounds for refusal – Separate examination of the grounds for refusal in relation to each of the products or services referred to in the application for registration – Duty to state reasons for a refusal of registration – Scope

(Council Regulation No 40/94, Arts 7(1), and 73)

2. Community trade mark – Definition and acquisition of the Community trade mark – Absolute grounds for refusal – Separate examination of the various grounds for refusal – Overlapping of the ambits of the grounds set out in Article 7(1)(b) to (d) of Regulation No 40/94

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

Summary

1. An examination of the absolute grounds for refusal set out in Article 7(1) of Regulation No 40/94 must, first, be carried out in relation to each of the goods and services for which trade mark registration is sought and, secondly, the decision of the competent authority refusing registration of a trade mark must, in principle, state reasons in respect of each of those goods or services.

However, the competent authority may use only general reasoning for all the goods and services concerned where the same ground of refusal is given for a category or group of goods or services. That power of the competent authority cannot, in particular, prejudice the essential requirement for any decision refusing the benefit of a right conferred by Community law to be subject to judicial review designed to secure effective protection of that right, that must, accordingly, cover the legality of the reasons for the decision.

First, such a power extends only to goods and services interlinked in a sufficiently direct and specific way, to the point where they form a sufficiently homogeneous category or group of goods or services. Secondly, the mere fact that the goods and services concerned are within the same class of the Nice Agreement is not sufficient for a finding that such homogeneity exists, as those classes often contain a large variety of goods and services not necessarily interlinked in a sufficiently direct and specific way.

(see paras 37-40)

2. Even if there is a degree of overlapping of the respective ambits of the absolute grounds for refusal to register a trade mark set out in Article 7(1)(b) to (d) of Regulation No 40/94 on the Community trade mark, it is nevertheless the case that each of the grounds for refusal to register listed in Article 7(1) of that regulation is independent of the others and requires separate examination.

The overlapping of the absolute grounds for refusal implies that a word mark descriptive of characteristics of goods or services may, on that account, be devoid of any distinctive character in relation to those goods or services, without prejudice to other reasons why it may be devoid of distinctive character.

(see paras 50, 52)