Keywords
Summary

Keywords

1. Community trade mark - Decisions of the Office - Observance of the rights of the defence

(Council Regulation No 40/94, Art. 73)

2. Community trade mark - Definition and acquisition of the Community trade mark - Absolute grounds for refusal - Lack of distinctive character in a sign - Finding of absence of an additional element of imagination or a minimum amount of imagination insufficient to hold a sign devoid of distinctiveness

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

3. Community trade mark - Definition and acquisition of the Community trade mark - Absolute grounds for refusal - Signs devoid of any distinctive character - EUROCOOL

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

Summary

1. The rights of defence, observance of which is a general rule of Community law laid down by Article 73 of Regulation No 40/94 on the Community trade mark, which provides that decisions of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) are to be based only on reasons on which the parties have had an opportunity to present their comments, are infringed by a decision of a Board of Appeal of the Office which fails to accord the party concerned an opportunity to express its views on the absolute grounds for refusal to register a Community trade mark, applied by the Board of its own motion.

( see paras 20-22 )

2. The absence of distinctive character under Article 7(1)(b) of Regulation No 40/94 on the Community trade mark cannot arise merely from the finding that a sign lacks an additional element of imagination or a minimum amount of imagination. A Community trade mark is not necessarily a work of invention and is founded not on any element of originality or imagination but on its ability to distinguish goods or services on the market from goods or services of the same kind offered by competitors.

( see para. 45 )

3. The term EUROCOOL is not devoid of distinctive character for the purposes of Article 7(1)(b) of Regulation No 40/94 on the Community trade mark, registration of which is sought for services, including the storage and keeping of goods, especially chilled and frozen goods, and the planning of logistic systems especially for the transport and storage of such goods.

In that regard, the fact that the sign is made up of components which may allude to certain features of the services referred to in the application for registration and that the combination of those components complies with linguistic rules is not sufficient to justify application of the absolute ground for refusal laid down by Article 7(1)(b), unless it amounts to proof that such a sign, looked at as a whole, would not enable the section of the public targeted to distinguish the applicant's services from those of its competitors. That is not the case, since (i) for a targeted public, deemed to be composed of specialists who are well informed, observant and circumspect in the instant case, the term EUROCOOL, taken as a whole, is inherently capable of being perceived as a distinctive sign and (ii) it is not established that the term, taken as a whole, is a generic or usual name in the food and hotel industry, or the sector for the services referred to in the application for registration, for the purpose of identifying or distinguishing those services.

( see paras 43, 47, 49-50, 52 )