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 - CARCARD

(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.

However, that is not the case where the sign in respect of which registration is sought is descriptive only of certain services, which, in view of the size of the category within which they fall, represent only a negligible part of that category.

( see paras 33, 36, 43 )

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.

As regards, first, registration of the word CARCARD for the categories of goods listed as machine-readable data carriers equipped with programs and/or data, ... in particular magnetic cards and/or chip cards and/or credit cards, the word CARCARD taken as a whole must be considered to be capable of designating both the kind and quality of those goods. The goods actually comprise different kinds of card and the fact that they are linked to a car must be considered to be a quality of the goods that the intended public is liable to take into account when making its decision and accordingly constitutes an essential characteristic. Therefore there is a sufficiently direct and concrete association between the word CARCARD and those goods, from the point of view of the intended public.

Similarly, the word CARCARD is also capable of designating the quality of the categories of service listed as issuing of credit cards and/or magnetic cards and/or chip cards; issuing of identification cards for granting access to and/or payment of goods and services such as services and/or guarantee services and/or bonus systems and/or incentives and/or recycling, given that those services relate to the marketing of cards.

As regards registration of that word for services provided in relation to the leasing of motor vehicles, arranging fuel supplies and car maintenance, arranging of telecommunication services, arranging and/or rental of vehicles and database services, those services must be regarded as having a direct connection with the operation and use of a car. The fact that they can be accessed and paid for by means of a card that is linked to a car is thus an aspect of those services that the intended public is liable to take into account when making its decision, so that, from the point of view of the intended public, there is a sufficiently direct and specific association between the word CARCARD and those services.

It follows that the word CARCARD may, from the point of view of the intended public, serve to designate the essential characteristics of the goods and services in the categories listed above, within the meaning of Article 7(1)(c) of Regulation No 40/94.

Second, as regards registration for goods falling within the categories listed as stationary and transportable data processing equipment; programs on data carriers for data and/or text and/or image processing, the word CARCARD does not appear to be capable of serving to designate any quality of those goods. Furthermore, even if the goods might be used in a way that involves a card linked to a car, that is not sufficient to infer that CARCARD may serve to designate the intended use of the goods in question since such use of the goods constitutes at most one of many possible areas of use thereof, but not a technical function. Nor, finally, can the word CARCARD be said to serve to designate any other essential characteristic of these goods.

As regards registration of that word for services relating to the arranging and processing of the payment of charges, arranging of services and guarantees, arranging of telecommunications services and rental and leasing of data processing equipment, those services do not appear to have any immediate connection with the operation or use of a car. Thus, even if the fact that they can be accessed and paid for using a card is a quality that the relevant class of persons might take into account when making a decision, the fact that the card is linked to a car cannot be regarded as an additional factor in that decision. Given that the descriptiveness of a sign composed of various elements must be assessed in the light of each component and not just one of them, the word CARCARD, taken as a whole, cannot serve to designate any quality of those services. Nor, furthermore, does that word appear to be capable of designating the intended use or any other essential characteristic of the services in question.

It follows that, from the point of view of the intended public, the word CARCARD cannot serve, for the purposes of Article 7(1)(c) of Regulation No 40/94, to designate one of the essential characteristics of the goods and services falling within the categories referred to second.

Moreover, it has not been established that the word CARCARD is not distinctive of those goods and services within the meaning of Article 7(1)(b) of Regulation No 40/94.

( see paras 32-35, 37, 39-42, 44, 47, 59 )

4. The descriptiveness of a 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 a sign's descriptiveness in respect of a particular category of goods or service, whether the applicant for the trade mark in question is contemplating using or is actually using a particular marketing concept involving goods and services in other categories in addition to the goods and 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. 46 )