JUDGMENT OF THE COURT (Sixth Chamber)
12 February 2004 (1)
(Approximation of laws - Trade marks - Directive 89/104/EEC - Article 3(1) - Ground for refusal to register - Neologism composed of elements each of which is descriptive of characteristics of the goods or services concerned)
In Case C-265/00,
REFERENCE to the Court under Article 234 EC by the Benelux-Gerechtshof for a preliminary ruling in the proceedings pending before that court between
Campina Melkunie BV
and
Benelux-Merkenbureau,
on the interpretation of Articles 2 and 3(1) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1),
THE COURT (Sixth Chamber),
composed of: V. Skouris, acting for the President of the Sixth Chamber, C. Gulmann, J.N. Cunha Rodrigues, R. Schintgen and F. Macken (Rapporteur), Judges,
Advocate General: D. Ruiz-Jarabo Colomer,
Registrar: H. von Holstein, Deputy Registrar,
after considering the written observations submitted on behalf of:
- Campina Melkunie BV, by T. van Innis and J. Oomens, advocaten,
- the Benelux-Merkenbureau, by L. De Gryse and J.H. Spoor, advocaten,
- the Portuguese Government, by L.I. Fernandes and A.F. do EspĂrito Santo Robalo, acting as Agents,
- the Commission of the European Communities, by K. Banks and H.M.H. Speyart, acting as Agents,
having regard to the Report for the Hearing,
after hearing the oral observations of Campina Melkunie BV and of the Benelux-Merkenbureau at the hearing on 15 November 2001,
after hearing the Opinion of the Advocate General at the sitting on 31 January 2002,
gives the following
Legal framework
Community legislation
A trade mark may consist of any sign capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.
1. The following shall not be registered or if registered shall be liable to be declared invalid:
(a) signs which cannot constitute a trade mark;
(b) trade marks which are devoid of any distinctive character;
(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate 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;
(d) trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade;
...
3. A trade mark shall not be refused registration or be declared invalid in accordance with paragraph 1(b), (c) or (d) if, before the date of application for registration and following the use which has been made of it, it has acquired a distinctive character. Any Member State may in addition provide that this provision shall also apply where the distinctive character was acquired after the date of application for registration or after the date of registration.
Relevant Benelux legislation
The following may be registered as individual marks: names, designs, imprints, stamps, letters, numerals, the shape of goods or their packaging, and any other signs which serve to distinguish the goods of an undertaking.
However, shapes which result from the nature of the goods themselves, or which affect the substantial value of the goods, or which give rise to a technical result may not be registered as trade marks.
1. The Benelux Trade Mark Office shall refuse registration where it considers that:
(a) the sign filed does not constitute a trade mark within the meaning of Article 1, in particular because it is devoid of any distinctive character, as provided for in Article 6 quinquies B(2) of the Paris Convention;
(b) the filing relates to a trade mark referred to in Article 4(1) and (2).
2. The refusal to register must relate to the sign that constitutes the trade mark in its entirety. It may be confined to one or more of the goods for which the mark is intended to be used.
The main proceedings and the questions referred for a preliminary ruling
1. Must Articles 2 and 3(1) of the Directive be construed as meaning that, in determining whether a sign consisting of a new word composed of a number of elements has sufficient distinctive character to be capable of serving as a mark for the goods in question, it must be assumed that that question is in principle to be answered in the affirmative even if each of those elements is itself devoid of any distinctive character for those goods, and that the position will be different only if there are other circumstances, for instance if the new word constitutes an indication, which is obvious and directly comprehensible for any person, of a commercially essential combination of properties which cannot be indicated otherwise than through use of the new word?
2. If Question 1 is answered in the negative: must it then be assumed that a sign consisting of a new word composed of various elements, each of which is itself devoid of any distinctive character for the goods in question within the meaning of Article 3(1) of the Directive, is itself also devoid of any distinctive character, and that the situation may be different only if there are other circumstances which result in the combination of the component parts being greater than the sum of those parts, for instance where the new word indicates a certain creativity?
3. Does it make any difference for the answer to Question 2 whether synonyms exist for each of the component parts of the sign, with the result that competitors of the applicant for registration who wish to make it clear to the public that their products too contain the combination of properties indicated by the new word can reasonably also do so by using those synonyms?
The questions referred
Observations submitted to the Court
The Court's reply
For the purposes of determining whether the ground for refusal 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 referred to in the application for registration.
Costs
44. The costs incurred by the Portuguese Government and by the Commission, which have submitted observations to the Court, are not recoverable. Since these proceedings are, for the parties to the main proceedings, a step in the action pending before the national court, the decision on costs is a matter for that court.
On those grounds,
THE COURT (Sixth Chamber),
in answer to the questions referred to it by the Benelux-Gerechtshof by judgment of 26 June 2000, hereby rules:
Article 3(1)(c) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks must be interpreted as meaning that a trade mark consisting of a neologism 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 neologism and the mere sum of its parts: that assumes 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.
For the purposes of determining whether the ground for refusal set out in Article 3(1)(c) of Directive 89/104 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 referred to in the application for registration.
Skouris
SchintgenMacken
|
Delivered in open court in Luxembourg on 12 February 2004.
R. Grass V. Skouris
Registrar President
1: Language of the case: Dutch.