IP case law Court of Justice

Devoid of any distinctive character

1.(b) trade marks which are devoid of any distinctive character;

1 pending referral

Referral C-541/18 (Deutsches Patent- und Markenamt, 21 Aug 2018)


6 preliminary rulings

Judgment of 15 Mar 2012, C-90/11 (Strigl)

Article 3(1)(b) and (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 it is applicable to a word mark which consists of the juxtaposition of a descriptive word combination and a letter sequence which is non-descriptive in itself, if the relevant public perceives that sequence as being an abbreviation of that word combination by reason of the fact that it reproduces the first letter of each word of that combination, and that the mark in question, considered as a whole, can thus be understood as a combination of descriptive indications or abbreviations which is therefore devoid of distinctive character.

Judgment of 9 Mar 2006, C-421/04 (Matratzen Concord)

Article 3(1)(b) and (c) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks does not preclude the registration in a Member State, as a national trade mark, of a term borrowed from the language of another Member State in which it is devoid of distinctive character or descriptive of the goods or services in respect of which registration is sought, unless the relevant parties in the Member State in which registration is sought are capable of identifying the meaning of the term.

Judgment of 16 Sep 2004, C-404/02 (Nichols)

In the context of Article 3(1)(b) of the First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks, the assessment of the existence or otherwise of the distinctive character of a trade mark constituted by a surname, even a common one, must be carried out specifically, in accordance with the criteria applicable to any sign covered by Article 2 of that directive, in relation, first, to the products or services in respect of which registration is applied for and, second, to the perception of the relevant consumers. The fact that the effects of registration of the trade mark are limited by virtue of Article 6(1)(a) of that directive has no impact on that assessment.

Judgment of 12 Feb 2004, C-218/01 (Henkel)

For three-dimensional trade marks consisting of the packaging of goods which are packaged in trade for reasons linked to the very nature of the product, their distinctive character within the meaning of Article 3(1)(b) of Directive 89/104 must be assessed by reference to the perception of the average consumer of such goods, who is reasonably well informed and reasonably observant and circumspect. Such a trade mark must enable such a consumer to distinguish the product concerned from those of other undertakings without conducting an analytical or comparative examination and without paying particular attention.

The distinctive character of a trade mark within the meaning of Article 3(1)(b) of Directive 89/104 may be assessed solely on the basis of national trade usage, without any need for other administrative investigations to be undertaken in order to determine whether and to what extent identical trade marks have been registered or have been refused registration in other Member States of the European Union.     The fact that an identical trade mark has been registered in one Member State for identical goods or services may be taken into consideration by the competent authority of another Member State among all the circumstances which that authority must take into account in assessing the distinctive character of a trade mark, but it is not decisive regarding the latter's decision to grant or refuse registration of a trade mark.     On the other hand, the fact that a trade mark has been registered in one Member State for certain goods or services can have no bearing on the examination by the competent trade mark registration authority of another Member State of the distinctive character of a similar trade mark for goods or services similar to those for which the first trade mark was registered.

Judgment of 6 May 2003, C-104/01 (Libertel)

A colour per se , not spatially delimited, may, in respect of certain goods and services, have a distinctive character within the meaning of Article 3(1)(b) and Article 3(3) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks, provided that, inter alia , it may be represented graphically in a way that is clear, precise, self-contained, easily accessible, intelligible, durable and objective. The latter condition cannot be satisfied merely by reproducing on paper the colour in question, but may be satisfied by designating that colour using an internationally recognised identification code.

In assessing the potential distinctiveness of a given colour as a trade mark, regard must be had to the general interest in not unduly restricting the availability of colours for the other traders who offer for sale goods or services of the same type as those in respect of which registration is sought.

A colour per se may be found to possess distinctive character within the meaning of Article 3(1)(b) and Article 3(3) of Directive 89/104, provided that, as regards the perception of the relevant public, the mark is capable of identifying the product or service for which registration is sought as originating from a particular undertaking and distinguishing that product or service from those of other undertakings.

In assessing whether a trade mark has distinctive character within the meaning of Article 3(1)(b) and Article 3(3) of Directive 89/104, the competent authority for registering trade marks must carry out an examination by reference to the actual situation, taking account of all the circumstances of the case and in particular any use which has been made of the mark. Puissochet Wathelet Timmermans Gulmann Edward Jann Macken von Bahr Cunha Rodrigues

Judgment of 18 Jun 2002, C-299/99 (Philips / Remington)

There is no category of marks which is not excluded from registration by Article 3(1)(b), (c) and (d) and Article 3(3) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks which is none the less excluded from registration by Article 3(1)(a) thereof on the ground that such marks are incapable of distinguishing the goods of the proprietor of the mark from those of other undertakings.

38 appeals

Judgment of 25 Oct 2018, C-433/17 (Enercon v EUIPO)


Order of 4 Oct 2018, C-326/18 (Safe Skies v EUIPO)


Judgment of 13 Sep 2018, C-26/17 (Birkenstock Sales v EUIPO)


Judgment of 6 Sep 2018, C-488/16 (Bundesverband Souvenir - Geschenke - Ehrenpreise v EUIPO)


Judgment of 25 Jul 2018, C-84/17 (Société des Produits Nestlé)


Judgment of 4 May 2017, C-417/16 (August Storck v EUIPO)


Order of 11 May 2016, C-636/15 (August Storck v OHIM)


Order of 15 Mar 2016, C-476/15 (Grupo Bimbo v OHIM)


Order of 25 Feb 2016, C-346/15 (Steinbeck v OHIM)


Order of 2 Sep 2015, C-531/14 (Giorgis)


Judgment of 7 May 2015, C-445/13 (Voss of Norway)


Order of 11 Sep 2014, C-521/13 (Think Schuhwerk)


Order of 12 Jun 2014, C-448/13 (Delphi Technologies)


Judgment of 15 May 2014, C-97/12 (Louis Vuitton Malletier)


Order of 12 Dec 2013, C-70/13 (Getty Images)


Judgment of 12 Jul 2012, C-311/11 (Smart Technologies)


Judgment of 24 May 2012, C-98/11 (Chocoladefabriken Lindt)


Judgment of 20 Oct 2011, C-344/10 (Freixenet)


Judgment of 9 Sep 2010, C-265/09 (BORCO-Marken-Import - alpha)


Judgment of 21 Jan 2010, C-398/08 (Audi - Vorsprung durch Technik)


Order of 30 Jan 2009, C-131/08 (Dorel Juvenile - SAFETY 1ST)


Judgment of 8 May 2008, C-304/06 (Eurohypo )


Judgment of 25 Oct 2007, C-238/06 (Develey - Shape of a plastic bottle)


Judgment of 4 Oct 2007, C-144/06 (Henkel - red and white tablet )


Judgment of 19 Apr 2007, C-273/05 (Celltech)


Judgment of 22 Jun 2006, C-24/05 (Storck - shape of a light-brown sweet)


Judgment of 12 Jan 2006, C-173/04 (Deutsche SiSi-Werke - stand-up pouches)


Judgment of 15 Sep 2005, C-37/03 (BioID)


Judgment of 30 Jun 2005, C-286/04 (Eurocermex - shape of a bottle)


Judgment of 21 Oct 2004, C-64/02 (Erpo M)


Judgment of 7 Oct 2004, C-136/02 (Mag Instrument - Three-dimensional torch shapes)


Judgment of 16 Sep 2004, C-329/02 (SAT.1 - SAT.2)


Order of 28 Jun 2004, C-445/02 (Glaverbel - design applied to the surface of the goods)


Judgment of 29 Apr 2004, C-456/01 (Henkel)


Judgment of 29 Apr 2004, C-473/01 (Procter & Gamble - Three-dimensional tablets)


Judgment of 29 Apr 2004, C-468/01 (Procter & Gamble - tablets for washing machines)


Judgment of 19 Sep 2002, C-104/00 (DKV - Companyline)


Judgment of 20 Sep 2001, C-383/99 (Procter & Gamble - BABY-DRY)



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