IP case law Court of Justice

Descriptive

1.(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 services;

2 pending referrals

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


Referral C-578/17 (Hartwall, 3 Oct 2017)


6 preliminary rulings

Judgment of 6 Jul 2017, C-139/16 (Juan Moreno Marín)

A sign such as ‘la Milla de Oro’, referring to the characteristic of a product or service which is that it can be found in abundance in a single place with a high degree of value and quality, cannot constitute an indication of geographical origin, since that sign must be accompanied by a name designating a geographical place so that the actual physical space with which a strong concentration of a product or service of a high degree of value or quality is associated may be identified.

Article 3(1)(c) of 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 a sign such as ‘la Milla de Oro’, referring to the characteristic of a product or service which is that such a product or service can be found in abundance in a single place with a high degree of value, is unlikely to have characteristics the use of which as a trade mark would constitute a ground for invalidity within the meaning of that provision.

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 12 Feb 2004, C-363/99 (KPN (postkantoor))

Article 3(1)(c) of Directive 89/104 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.

Article 3(1) of Directive 89/104 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 Directive 89/104 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 Directive 89/104 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.

Article 3(1)(c) of Directive 89/104 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 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 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.

Judgment of 12 Feb 2004, C-265/00 (Campina - biolmild))

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 Gulmann Cunha Rodrigues Schintgen Macken

Judgment of 4 May 1999, C-108/97 (Chiemsee)

Article 3(1)(c) of the First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks is to be interpreted as meaning that: - it does not prohibit the registration of geographical names as trade marks solely where the names designate places which are, in the mind of the relevant class of persons, currently associated with the category of goods in question; it also applies to geographical names which are liable to be used in future by the undertakings concerned as an indication of the geographical origin of that category of goods; - where there is currently no association in the mind of the relevant class of persons between the geographical name and the category of goods in question, the competent authority must assess whether it is reasonable to assume that such a name is, in the mind of the relevant class of persons, capable of designating the geographical origin of that category of goods; - in making that assessment, particular consideration should be given to the degree of familiarity amongst the relevant class of persons with the geographical name in question, with the characteristics of the place designated by that name, and with the category of goods concerned; - it is not necessary for the goods to be manufactured in the geographical location in order for them to be associated with it.

19 appeals

Order of 11 Sep 2018, C-542/17 (Allstate Insurance v EUIPO)


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


Judgment of 6 Jun 2018, C-32/17 (Apcoa Parking Holdings v EUIPO)


Judgment of 17 May 2017, C-437/15 (OHIM v Deluxe Laboratories)


Judgment of 15 Dec 2016, C-37/17 (Keil v EUIPO)


Order of 30 Apr 2015, C-622/13 (Castel Frères SAS)


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


Order of 14 Mar 2011, C-369/10 (Ravensburger - Memory)


Judgment of 10 Mar 2011, C-51/10 (1000)


Judgment of 25 Feb 2010, C-408/08 (Lanc)


Order of 2 Dec 2009, C-553/08 (Powerserv Personalservice - MANPOWER)


Order of 24 Sep 2009, C-520/08 (HUP Uslugi - I.T.@MANPOWER)


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


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


Order of 5 Feb 2004, C-326/01 (Telefon & Buch - Universaltelefonbuch and Universalkommunikationsverzeichnis)


Order of 5 Feb 2004, C-150/02 (Streamserve)


Judgment of 23 Oct 2003, C-191/01 (Wrigley - doublemint)


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


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



Disclaimer