Case C‑629/17

J. Portugal Ramos Vinhos SA

v

Adega Cooperativa de Borba CRL

(Request for a preliminary ruling from the Supremo Tribunal de Justiça)

(Reference for a preliminary ruling — Intellectual property — Trade mark law — Directive 2008/95/EC — Article 3(1)(c) — Grounds for invalidity — Word marks which consist exclusively of signs or indications which may serve in trade to designate the characteristics of goods or services — Other characteristics of goods or services — Production facility for a product — Word mark composed of a sign designating wine products and of a geographical name, constituting a word element of the trade mark proprietor’s business name)

Summary — Judgment of the Court (Fourth Chamber), 6 December 2018

1. Approximation of laws — Trade marks — Directive 2008/95 — Grounds for refusal or invalidity — Marks composed exclusively of signs or indications capable of designating the characteristics of a product or service — Characteristics of goods or services — Concept

   (European Parliament and Council Directive 2008/95, Art. 3(1)(c))

2. Approximation of laws — Trade marks — Directive 2008/95 — Grounds for refusal or invalidity — Marks composed exclusively of signs or indications capable of designating the characteristics of a product or service — Mark composed of a work sign designating wine products and including a geographical name

   (European Parliament and Council Directive 2008/95, Art. 3(1)(c))

1.  By using, in Article 3(1)(c) of Directive 2008/95, 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 EU legislature made it clear, first, that those terms 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.

   On that basis, the fact that the Union legislature chose to use the word ‘characteristic’ highlights the fact that the signs referred to in that provision 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.

   Therefore, a sign can be refused registration on the basis of Article 3(1)(c) of Regulation No 2008/95 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.

   (see paras 18-20)

2.  Article 3(1)(c) of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks must be interpreted as meaning that a trade mark consisting of a word sign, such as that at issue in the main proceedings, designating wine products and including a geographical name, must be refused registration, where that sign contains, in particular, a term which is commonly used to designate facilities or sites in which such products are produced and is also one of the word elements of the business name of the legal person seeking to register that trade mark.

   (see para. 28, operative part)