Keywords
Summary

Keywords

1. Approximation of laws — Trade marks — Directive 89/104 — Registration of a new trade mark — Examination of the sign by the competent authority — Taking account of all the relevant facts and circumstances — (Council Directive 89/104, Art. 3)

2. Approximation of laws — Trade marks — Directive 89/104 — Registration of a new trade mark — Examination of the sign by the competent authority — Registration in another Member State of a similar mark for similar goods or services — No effect — (Council Directive 89/104, Art. 3)

3. Approximation of laws — Trade marks — Directive 89/104 — Refusal of registration or invalidity — Marks consisting exclusively of signs or indications which may serve to designate the characteristics of goods or services — Existence of more usual signs or indications for designating the same characteristics — Number of competitors who may have an interest in using the same signs or indications — No effect — Whether registration extends, in a system where a number of languages coexist, to translations of a word mark — Verification of the translations by the competent authority — (Council Directive 89/104, Art. 3(1)(c))

4. Approximation of laws — Trade marks — Directive 89/104 — Refusal of registration or invalidity — Trade mark devoid of distinctive character — Marks consisting exclusively of signs or indications which may serve to designate the characteristics of a product — Relation between the provisions of Article 3(1)(b) and Article 3(1)(c) — (Council Directive 89/104, Art. 3(1)(b) and (c))

5. Approximation of laws — Trade marks — Directive 89/104 — Refusal of registration or invalidity — Marks consisting exclusively of signs or indications which may serve to designate the characteristics of a product — Definition — Word mark composed of elements descriptive of characteristics of the goods or services concerned — Included where the nature of the combination is not unusual — (Council Directive 89/104, Art. 3(1)(c))

6. Approximation of laws — Trade marks — Directive 89/104 — Registration of a new trade mark — Examination of the sign by the competent authority — Registration for certain goods or services on condition that they do not possess a particular characteristic — Not permissible — (Council Directive 89/104)

7. Approximation of laws — Trade marks — Directive 89/104 — Registration of a new trade mark — Examination of the sign by the competent authority — Refusal to register limited to manifestly inadmissible marks — Not permissible — (Council Directive 89/104, Art. 3)

Summary

1. Article 3 of First Directive 89/104 on trade marks is to be interpreted as meaning that a trade mark registration authority must have regard, in addition to the mark as filed, to all the relevant facts and circumstances.

It must have regard to all the relevant facts and circumstances before adopting a final decision on an application to register a trade mark. A court asked to review a decision on an application to register a trade mark must also have regard to all the relevant facts and circumstances, subject to the limits on the exercise of its powers as defined by the relevant national legislation.

see para. 37, operative part 1

2. The fact that a trade mark has been registered in a Member State in respect of certain goods or services has no bearing on the examination by the trade mark registration authority of another Member State of an application for registration of a similar mark in respect of goods or services similar to those in respect of which the first mark was registered.

see para. 44, operative part 2

3. Article 3(1)(c) of First Directive 89/104 on trade marks precludes registration of a trade mark which consists exclusively of signs or indications which may serve, in trade, to designate characteristics of the goods or services in respect of which registration is sought, and that is the case even when there are more usual signs or indications for designating the same characteristics and regardless of the number of competitors who may have an interest in using the signs or indications of which the mark consists.

Where the applicable national law provides that the exclusive right conferred by registration, by a competent authority in an area in which a number of officially recognised languages coexist, of a word mark expressed in one of those languages extends automatically to its translation in the other languages, the authority must ascertain as regards each of those translations whether the mark actually consists exclusively of signs or indications which may serve, in trade, to designate characteristics of those goods or services.

see para. 61, operative part 3

4. Article 3(1) of First Directive 89/104 on trade marks must be interpreted as meaning that a mark which is descriptive of the characteristics of certain goods or services but not of those of other goods or services for the purposes of Article 3(1)(c) of the directive cannot be regarded as necessarily having distinctive character in relation to those other goods or services for the purposes of subparagraph (b) of the provision.

It is of no relevance that a mark is descriptive of the characteristics of certain goods or services under Article 3(1)(c) of the directive when it comes to assessing whether the same mark has distinctive character in relation to other goods or services for the purposes of Article 3(1)(b) of the Directive.

see para. 79, operative part 4

5. Article 3(1)(c) of First Directive 89/104 on trade marks must be interpreted as meaning that a mark consisting of a word composed of elements, each of which is descriptive of characteristics of the goods or services in respect of which registration is sought, is itself descriptive of the characteristics of those goods or services for the purposes of that provision, unless there is a perceptible difference between the word and the mere sum of its parts: that assumes either that because of the unusual nature of the combination in relation to the goods or services the word creates an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, with the result that the word is more than the sum of its parts, or that the word has become part of everyday language and has acquired its own meaning, with the result that it is now independent of its components. In the latter case, it is necessary to ascertain whether a word which has acquired its own meaning is not itself descriptive for the purposes of the same provision.

For the purposes of determining whether the ground for refusal to register set out in Article 3(1)(c) of the directive applies to such a mark, it is irrelevant whether or not there are synonyms capable of designating the same characteristics of the goods or services mentioned in the application for registration or that the characteristics of the goods or services which may be the subject of the description are commercially essential or merely ancillary.

see para. 104, operative part 5

6. First Directive 89/104 on trade marks prevents a trade mark registration authority from registering a mark for certain goods or services on condition that they do not possess a particular characteristic.

see para. 117, operative part 6

7. The practice of a trade mark registration authority which concentrates solely on refusing to register " manifestly inadmissible" marks is incompatible with Article 3 of First Directive 89/104 on trade marks.

see para. 126, operative part 7