IP case law Court of Justice

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



JUDGMENT OF THE COURT

4 May 1999 (1)

(Directive 89/104/EEC — Trade marks — Geographical indications of origin)

In Joined Cases C-108/97 and C-109/97,

REFERENCE to the Court under Article 234 EC (ex Article 177) by theLandgericht München I, Germany, for a preliminary ruling in the proceedingspending before that court between

Windsurfing Chiemsee Produktions- und Vertriebs GmbH (WSC)

and

Boots- und Segelzubehör Walter Huber (C-108/97),

Franz Attenberger (C-109/97)

on the interpretation of Articles 3(1)(c) and 3(3) of the First Council Directive89/104/EEC of 21 December 1988 to approximate the laws of the Member Statesrelating to trade marks (OJ 1989 L 40, p. 1),

THE COURT,

composed of: G.C. Rodríguez Iglesias, President, P.J.G. Kapteyn, J.-P. Puissochet,G. Hirsch and P. Jann (Presidents of Chambers), G.F. Mancini, J.C. Moitinho deAlmeida, C. Gulmann (Rapporteur) and D.A.O. Edward, Judges,

Advocate General: G. Cosmas,


Registrar: H.A. Rühl, Principal Administrator,

after considering the written observations submitted on behalf of:

—    Windsurfing Chiemsee Produktions- und Vertriebs GmbH (WSC), byStephan Gruber, Rechtsanwalt, Munich,

—    Boots- und Segelzubehör Walter Huber, by Michael Nieder, Rechtsanwalt,Munich,

—    Mr Attenberger, by Richard Schönwerth, Rechtsanwalt, Munich,

—    the Italian Government, by Umberto Leanza, Head of the LegalDepartment of the Ministry of Foreign Affairs, acting as Agent, assisted byOscar Fiumara, Avvocato dello Stato,

—    the Commission of the European Communities, by Jan Berend Drijber, ofits Legal Service, acting as Agent, assisted by Bertrand Wägenbaur, of theBrussels Bar,

having regard to the Report for the Hearing,

after hearing the oral observations of Windsurfing Chiemsee Produktions- undVertriebs GmbH (WSC), Boots- und Segelzubehör Walter Huber, Mr Attenbergerand the Commission at the hearing on 3 March 1998,

after hearing the Opinion of the Advocate General at the sitting on 5 May 1998,

gives the following

Judgment

1.     By two orders of 8 January 1997, received at the Court Registry on 14 March 1997,the Landgericht München I (Regional Court, Munich I) referred to the Court fora preliminary ruling under Article 234 EC (ex Article 177) a number of questionson the interpretation of Articles 3(1)(c) and 3(3) of the First Council Directive89/104/EEC of 21 December 1988 to approximate the laws of the Member Statesrelating to trade marks (OJ 1989 L 40, p. 1, hereinafter 'the Directive‘).

2.     Those questions were raised in two sets of proceedings between WindsurfingChiemsee Produktions- und Vertriebs GmbH (hereinafter 'WindsurfingChiemsee‘), on the one hand, and Boots- und Segelzubehör Walter Huber(hereinafter 'Huber‘) and Franz Attenberger, on the other, relating to the use byHuber and Mr Attenberger of the designation 'Chiemsee‘ for the sale ofsportswear.

Community law

3.     Article 2 of the Directive, entitled 'Signs of which a trade mark may consist‘,provides:

'A trade mark may consist of any sign capable of being represented graphically,particularly words, including personal names, designs, letters, numerals, the shapeof goods or of their packaging, provided that such signs are capable ofdistinguishing the goods or services of one undertaking from those of otherundertakings.‘

4.     Article 3 of the Directive, entitled 'Grounds for refusal or invalidity‘, provides

'1.    The following shall not be registered or if registered shall be liable to bedeclared 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 mayserve, in trade, to designate the kind, quality, quantity, intended purpose,value, geographical origin, or the time of production of the goods or ofrendering of the service, or other characteristics of the goods or service;

(d)    trade marks which consist exclusively of signs or indications which havebecome customary in the current language or in the bona fide andestablished practices of the trade;

...

(g)    trade marks which are of such a nature as to deceive the public, for instanceas to the nature, quality or geographical origin of the goods or service;

...

    

3.    A trade mark shall not be refused registration or be declared invalid inaccordance 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 adistinctive character. Any Member State may in addition provide that this provisionshall also apply where the distinctive character was acquired after the date ofapplication for registration or after the date of registration‘.

5.     Article 6 of the Directive, entitled 'Limitation of the effects of a trade mark‘,provides:

'1.    The trade mark shall not entitle the proprietor to prohibit a third party fromusing, in the course of trade,

...

(b)    indications concerning the kind, quality, quantity, intended purpose, value,geographical origin, the time of production of goods or of rendering of theservice, or other characteristics of goods or services;

...

provided he uses them in accordance with honest practices in industrial orcommercial matters‘.

6.     Article 15(2) of the Directive provides, under the heading 'Special provisions inrespect of collective marks, guarantee marks and certification marks‘:

'By way of derogation from Article 3(1)(c), Member States may provide that signsor indications which may serve, in trade, to designate the geographical origin of thegoods or services may constitute collective, guarantee or certification marks. Sucha mark does not entitle the proprietor to prohibit a third party from using in thecourse of trade such signs or indications, provided he uses them in accordance withhonest practices in industrial or commercial matters; in particular, such a mark maynot be invoked against a third party who is entitled to use a geographical name‘.

National law

7.     The Markengesetz (Law on Trade Marks), which has been applicable since 1January 1995, transposed the Directive into German law. Under Section 8(2)(2)of the Markengesetz, trade marks 'which consist exclusively of ... indications whichmay serve in trade to designate the ... geographical origin ... or other characteristicsof the goods‘ are to be refused registration.

8.     Pursuant to Section 8(3) of the Markengesetz, Section 8(2)(2) does not apply 'ifthe mark, before the time of the decision on registration, as a result of its use forthe goods ... in respect of which registration has been applied for, has gainedacceptance among the relevant class of persons‘.

The main proceedings and the questions referred

9.     The Chiemsee is the largest lake in Bavaria, with an area of 80 km2. It is a touristdestination and surfing is one of the activities carried on there. The surroundingarea, called the 'Chiemgau‘, is primarily agricultural.

10.     Windsurfing Chiemsee, which is based near the shores of the Chiemsee, sells sportsfashion clothing, shoes and other sports goods which are designed by a sistercompany based in the same place, but are manufactured elsewhere. The goodsbear the designation 'Chiemsee‘. Between 1992 and 1994, Windsurfing Chiemseeregistered that designation in Germany as a picture trade mark in the form ofvarious graphic designs, in some cases with additional features or words such as'Chiemsee Jeans‘ and 'Windsurfing — Chiemsee — Active Wear‘.

11.     According to the orders for reference, there is no German trade mark by which theword 'Chiemsee‘ as such is protected. The German registration authorities havehitherto regarded the word 'Chiemsee‘ as an indication which may serve todesignate geographical origin and which is consequently incapable of registrationas a trade mark. However, they have allowed the various particular graphicrepresentations of the word 'Chiemsee‘ and the additional accompanying featuresto be registered as picture marks.

12.     Huber has been selling sports clothing such as T-shirts and sweat-shirts since 1995in a town situated near the shores of the Chiemsee. The clothing bears thedesignation 'Chiemsee‘, but this is depicted in a different graphic form from thatof the trade marks which identify Windsurfing Chiemsee's products.

13.     Mr Attenberger sells the same type of sports clothing in the Chiemsee area, alsobearing the designation 'Chiemsee‘, but using different graphic forms and, forcertain products, additional features different from those of Windsurfing Chiemsee.

14.     In the main proceedings, Windsurfing Chiemsee challenges the use by Huber andMr Attenberger of the name 'Chiemsee‘, claiming that, notwithstanding thedifferences in graphic representation of the marks on the products in question,there is a likelihood of confusion with its designation 'Chiemsee‘ with which, itclaims, the public is familiar and which has in any case been in use since 1990.

15.     The defendants in the main proceedings, on the other hand, contend that, since theword 'Chiemsee‘ is an indication which designates geographical origin and mustconsequently remain available, it is not capable of protection, and that using it ina different graphic form from that used by Windsurfing Chiemsee cannot createany likelihood of confusion.

16.     The Landgericht München I makes the following observations in its orders forreference:

—    if a mark consists of a descriptive indication within the meaning of Article3(1)(c) of the Directive represented in an unusual graphic way, then thedistinctive character of the mark and the extent to which it is protected arebased only on the particular graphic components to be protected. Anylikelihood of confusion can result only from a similarity between thosecomponents, not from any similarity between the descriptive elements;

—    even if the competent authority has registered a trade mark only on thebasis of a particular graphic form of a word which it regards as incapableof protection in itself, the court hearing an infringement dispute may takethe view that the word itself is none the less entitled to protection anddetermine the 'overall impression‘ and distinctive character of the disputedmark differently from the registration authority;

—    in order for the main proceedings to be decided, it must be determinedwhether and, if so, to what extent the interpretation of Article 3(1)(c) of theDirective is affected and restricted by a 'need to leave free‘('Freihaltebedürfnis‘), which under German case-law must be a real,current or serious need. If it is unnecessary to have regard to or to evaluatea 'serious need to leave free‘, then the word 'Chiemsee‘ is automaticallycovered by Article 3(1)(c), because it may in any event serve to designatethe geographical origin of clothing. If, however, consideration must be givento a 'serious need to leave free‘, then the fact that there is no textileindustry on the shores of the Chiemsee must also be taken into account. The plaintiff's products may be designed there, but they are manufacturedabroad;

—    the question may also arise whether the word 'Chiemsee‘, can, followingthe use made of it, be protected as a trade mark without being registeredunder Section 4(2) of the Markengesetz. Since it follows that therequirements of Section 4(2) are fulfilled if those of Section 8(3) arefulfilled, Article 3(3) of the Directive, which constitutes the basis for Section8(3), calls for interpretation;

—    the question then arises whether Article 3(3) of the Directive implies thata sign is capable of registration when it has been used as a trade mark fora sufficient length of time and to a sufficient degree, such that a notinconsiderable proportion of the relevant circles view it as a trade mark orwhether, as the German legislature has suggested by its use of the conceptof 'trade acceptance‘ ('Verkehrsdurchsetzung‘) in Section 8(3) of theMarkengesetz, the strict requirements which it has hitherto been Germanpractice to impose continue to apply — which would suggest, inter alia, thatthe extent of 'trade acceptance‘ required varies according to how importantit is for the designation to be left free ('Freihalteinteresse‘).

17.     In those circumstances, the Landgericht München I, seeking guidance on theinterpretation of the Directive, decided to stay proceedings and refer the followingquestions to the Court of Justice for a preliminary ruling:

'1.    Questions on Article 3(1)(c):

    Is Article 3(1)(c) to be understood as meaning that it suffices if there is apossibility of the designation being used to indicate the geographical origin,or must that possibility be likely in a particular case (in the sense that othersuch undertakings already use that word to designate the geographical originof their goods of similar type, or at least that there are specific reasons tobelieve that that may be expected in the foreseeable future), or must thereeven be a need to use that designation to indicate the geographical originof the goods in question, or must there in addition also be a qualified needfor the use of that indication of origin, for instance because goods of thatkind, produced in that region, enjoy a special reputation?

    Is it of significance for a broader or narrower interpretation of Article3(1)(c) with respect to geographical indications of origin that the effects ofthe mark are restricted under Article 6(1)(b)?

    Do geographical indications of origin under Article 3(1)(c) cover only thosewhich relate to the manufacture of the goods at that place, or does trade inthose goods at that place or from that place suffice, or in the case of theproduction of textiles does it suffice if they are designed in the regiondesignated but then manufactured under contract elsewhere?

2.    Questions on the first sentence of Article 3(3):

    What requirements follow from this provision for the registrability of adescriptive designation under Article 3(1)(c)?

    In particular, are the requirements the same in all cases, or are therequirements different according to the degree of the need to leave free?

    Is in particular the view hitherto taken in the German case-law, namely thatin the case of descriptive designations which need to be left free, tradeacceptance in more than 50% of the trade circles concerned is required andis to be demonstrated, compatible with that provision?

    Do requirements follow from this provision as to the manner in whichdescriptive character acquired by use is to be ascertained?‘

18.     By order of the President of the Court of 8 July 1997, the two cases were joinedfor the purposes of the written and oral procedure and the judgment.

Questions on Article 3(1)(c) of the Directive

19.     By those questions, which may conveniently be considered together, the nationalcourt is essentially asking in what circumstances Article 3(1)(c) of the Directiveprecludes registration of a trade mark which consists exclusively of a geographicalname. In particular, it is asking:

—    if the application of Article 3(1)(c) depends on whether there is a real,current or serious need to leave the sign or indication free; and

—    what connection there must be between the geographical location and thegoods in respect of which registration of the geographical name for thatlocation as a trade mark is applied for.

20.     Windsurfing Chiemsee claims that Article 3(1)(c) of the Directive precludesregistration of an indication of geographical origin as a trade mark only where theindication in fact designates a specified place, several undertakings manufacture thegoods in respect of which protection is applied for in that place, and the placename is habitually used to designate the geographical origin of those goods.

21.     Huber and Mr Attenberger contend that the fact that there is a serious possibilitythat a name may in future be used to designate geographical origin in the sectorof the goods in question is sufficient to preclude registration of that name as atrade mark under Article 3(1)(c) of the Directive. That provision is not, in theirview, directed exclusively at indications of origin which relate to manufacture of thegoods.

22.     The Italian Government submits that it must be left open to each undertaking toavail itself of the possibility of using, whether for manufacture or for trade, anindication of geographical origin to designate goods which are connected in any waywith a particular place. The mere fact that the indication can be used to designategeographical origin is sufficient for Article 3(1)(c) to come into play and there doesnot appear to be any need for the possibility to be of a particular kind in order forthat provision to apply.

23.     The Commission considers that Article 3(1)(c) should be interpreted as meaningthat the question whether there are grounds for refusing registration does notdepend on the existence or otherwise in a particular case of a real or serious needto leave a sign or indication free for the benefit of third parties. In the case ofsports fashion goods, the place or area where those goods were designed and, ifrelevant, where the undertaking which placed the order for their manufacture isbased, are covered by indications of geographical origin under Article 3(1)(c).

24.     It should first of all be observed that Article 3(1)(c) of the Directive provides thatregistration is to be refused in respect of descriptive marks, that is to say marks

composed exclusively of signs or indications which may serve to designate thecharacteristics of the categories of goods or services in respect of which registrationis applied for.

25.     However, Article 3(1)(c) of the Directive pursues an aim which is in the publicinterest, namely that descriptive signs or indications relating to the categories ofgoods or services in respect of which registration is applied for may be freely usedby all, including as collective marks or as part of complex or graphic marks. Article3(1)(c) therefore prevents such signs and indications from being reserved to oneundertaking alone because they have been registered as trade marks.

26.     As regards, more particularly, signs or indications which may serve to designate thegeographical origin of the categories of goods in relation to which registration ofthe mark is applied for, especially geographical names, it is in the public interestthat they remain available, not least because they may be an indication of thequality and other characteristics of the categories of goods concerned, and mayalso, in various ways, influence consumer tastes by, for instance, associating thegoods with a place that may give rise to a favourable response.

27.     The public interest underlying the provision which the national court has asked theCourt to interpret is also evident in the fact that it is open to the Member States,under Article 15(2) of the Directive, to provide, by way of derogation from Article3(1)(c), that signs or indications which may serve to designate the geographicalorigin of the goods may constitute collective marks.

28.     In addition, Article 6(1)(b) of the Directive, to which the national court refers inits questions, does not run counter to what has been stated as to the objective ofArticle 3(1)(c), nor does it have a decisive bearing on the interpretation of thatprovision. Indeed, Article 6(1)(b), which aims, inter alia, to resolve the problemsposed by registration of a mark consisting wholly or partly of a geographical name,does not confer on third parties the right to use the name as a trade mark butmerely guarantees their right to use it descriptively, that is to say, as an indicationof geographical origin, provided that it is used in accordance with honest practicesin industrial and commercial matters.

29.     Article 3(1)(c) of the Directive is not confined to prohibiting the registration ofgeographical names as trade marks solely where they designate specifiedgeographical locations which are already famous, or are known for the category ofgoods concerned, and which are therefore associated with those goods in the mindof the relevant class of persons, that is to say in the trade and amongst averageconsumers of that category of goods in the territory in respect of which registrationis applied for.

30.     Indeed, it is clear from the actual wording of Article 3(1)(c), which refers to '...indications which may serve ... to designate ... geographical origin‘, that

geographical names which are liable to be used by undertakings must remainavailable to such undertakings as indications of the geographical origin of thecategory of goods concerned.

31.     Thus, under Article 3(1)(c) of the Directive, the competent authority must assesswhether a geographical name in respect of which application for registration as atrade mark is made designates a place which is currently associated in the mind ofthe relevant class of persons with the category of goods concerned, or whether itis reasonable to assume that such an association may be established in the future.

32.     In the latter case, when assessing whether the geographical name is capable, in themind of the relevant class of persons, of designating the origin of the category ofgoods in question, regard must be had more particularly to the degree of familiarityamongst such persons with that name, with the characteristics of the placedesignated by the name, and with the category of goods concerned.

33.     In that connection, Article 3(1)(c) of the Directive does not in principle precludethe registration of geographical names which are unknown to the relevant class ofpersons — or at least unknown as the designation of a geographical location — or ofnames in respect of which, because of the type of place they designate (say, amountain or lake), such persons are unlikely to believe that the category of goodsconcerned originates there.

34.     However, it cannot be ruled out that the name of a lake may serve to designategeographical origin within the meaning of Article 3(1)(c), even for goods such asthose in the main proceedings, provided that the name could be understood by therelevant class of persons to include the shores of the lake or the surrounding area.

35.     It follows from the foregoing that the application of Article 3(1)(c) of the Directivedoes not depend on there being a real, current or serious need to leave a sign orindication free ('Freihaltebedürfnis‘) under German case-law, as outlined in thethird indent of paragraph 16 of this judgment.

36.     Finally, it is important to note that, whilst an indication of the geographical originof goods to which Article 3(1)(c) of the Directive applies usually indicates the placewhere the goods were or could be manufactured, the connection between acategory of goods and a geographical location might depend on other ties, such asthe fact that the goods were conceived and designed in the geographical locationconcerned.

37.     In view of the foregoing, the answer to the questions on Article 3(1)(c) of theDirective must be that Article 3(1)(c) is to be interpreted as meaning that:

—    it does not prohibit the registration of geographical names as trade markssolely where the names designate places which are, in the mind of therelevant class of persons, currently associated with the category of goods in

question; it also applies to geographical names which are liable to be usedin future by the undertakings concerned as an indication of the geographicalorigin of that category of goods;

—    where there is currently no association in the mind of the relevant class ofpersons between the geographical name and the category of goods inquestion, the competent authority must assess whether it is reasonable toassume 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 thedegree of familiarity amongst the relevant class of persons with thegeographical name in question, with the characteristics of the placedesignated by that name, and with the category of goods concerned;

—    it is not necessary for the goods to be manufactured in the geographicallocation in order for them to be associated with it.

Questions on the first sentence of Article 3(3) of the Directive

38.     By those questions, the national court is essentially asking what requirements mustbe met, for the purposes of the first sentence of Article 3(3) of the Directive, inorder for a mark to have acquired distinctive character through use. In particular,it is asking whether those requirements differ according to the extent of the needto keep the mark free ('Freihaltebedürfnis‘), and whether that provision lays downany requirements as to how distinctive character acquired through use is to beassessed.

39.     Windsurfing Chiemsee claims that the degree of distinctive character requiredunder Article 3(3) is the same as that initially required on registration of a mark,and that the concept of the need to keep a mark free is consequently of norelevance. It argues that there need not be specific trade acceptance amongst therelevant class of persons. When assessing distinctive character acquired throughuse, all the evidence must be admitted and evaluated, including evidence relatingto the turnover of the mark, advertising costs and press reports.

40.     Huber contends that Article 3(3) of the Directive and Section 8(3) of theMarkengesetz represent 'two sides of the same coin‘. Where Article 3(3) refersto the result, that is to say the acquisition of distinctive character, Section 8(3)focuses on the way in which that result was achieved, namely trade acceptance ofthe mark amongst the relevant class of persons as a distinctive sign of the goods. Whether or not a descriptive name is registrable depends on the case in point andparticularly on the importance of leaving the name free. The requirement thattrade acceptance of descriptive names should extend to more than 50% of therelevant class of persons is compatible with Article 3(3) of the Directive. Huber

further submits that the method to be used to assess trade acceptance of a markis a matter for national law.

41.     Mr Attenberger contends that the requirements as to distinctive character underArticle 3(3) of the Directive differ from those under Article 3(1)(b), and that theconcept of distinctive character is akin to that of 'trade acceptance‘ under Section8(3) of the Markengesetz. In his submission, a descriptive mark acquires distinctivecharacter through use if at least 50% of the relevant class of persons throughoutthe Member State under consideration recognise the sign used as an identifyingcommercial sign. The required degree of trade acceptance depends on howimportant it is for the sign to be left free. It is for the national court to determine,under the procedural provisions of its national law, the method by which distinctivecharacter acquired through use is to be assessed.

42.     The Italian Government contends that, where a mark containing a geographicalname has acquired a single distinctive character through use unconnected with itsgraphic representation, there is no reason to deny the proprietor of that mark thebroadest possible protection, even to the detriment of third parties. It should beleft to the national court to make that assessment, which warrants caution in theabsence of precise guidance from the Directive.

43.     The Commission submits that a mark acquires distinctive character through useunder Article 3(3) of the Directive if consumers regard the indication in questionas a trade mark before an application for registration is made, and that the needto keep it free is of relatively little consequence in this respect. In addition, itargues that distinctive character must be assessed by examining each caseindividually, but that it need not be established that trade acceptance extends toover 50% of the relevant class of persons. In the Commission's view, accountshould be taken not only of opinion polls but also, for instance, of statements fromchambers of commerce and industry, trade and professional associations andexperts.

44.     The first point to note is that Article 3(3) of the Directive provides that a sign may,through use, acquire a distinctive character which it initially lacked and thus beregistered as a trade mark. It is therefore through the use made of it that the signacquires the distinctive character which is a prerequisite for its registration.

45.     Article 3(3) therefore constitutes a major exception to the rule laid down inArticles 3(1)(b), (c) and (d), whereby registration is to be refused in relation totrade marks which are devoid of any distinctive character, descriptive marks, andmarks which consist exclusively of indications which have become customary in thecurrent language or in the bona fide and established practices of the trade.

46.     Secondly, just as distinctive character is one of the general conditions for registeringa trade mark under Article 3(1)(b), distinctive character acquired through usemeans that the mark must serve to identify the product in respect of which

registration is applied for as originating from a particular undertaking, and thus todistinguish that product from goods of other undertakings.

47.     It follows that a geographical name may be registered as a trade mark if, followingthe use which has been made of it, it has come to identify the product in respectof which registration is applied for as originating from a particular undertaking andthus to distinguish that product from goods of other undertakings. Where that isthe case, the geographical designation has gained a new significance and itsconnotation, no longer purely descriptive, justifies its registration as a trade mark.

48.     Windsurfing Chiemsee and the Commission are therefore right to assert thatArticle 3(3) does not permit any differentiation as regards distinctiveness byreference to the perceived importance of keeping the geographical name availablefor use by other undertakings.

49.     In determining whether a mark has acquired distinctive character following the usemade of it, the competent authority must make an overall assessment of theevidence that the mark has come to identify the product concerned as originatingfrom a particular undertaking, and thus to distinguish that product from goods ofother undertakings.

50.     In that connection, regard must be had in particular to the specific nature of thegeographical name in question. Indeed, where a geographical name is very wellknown, it can acquire distinctive character under Article 3(3) of the Directive onlyif there has been long-standing and intensive use of the mark by the undertakingapplying for registration. A fortiori, where a name is already familiar as anindication of geographical origin in relation to a certain category of goods, anundertaking applying for registration of the name in respect of goods in thatcategory must show that the use of the mark — both long-standing and intensive —is particularly well established.

51.     In assessing the distinctive character of a mark in respect of which registration hasbeen applied for, the following may also be taken into account: the market shareheld by the mark; how intensive, geographically widespread and long-standing useof the mark has been; the amount invested by the undertaking in promoting themark; the proportion of the relevant class of persons who, because of the mark,identify goods as originating from a particular undertaking; and statements fromchambers of commerce and industry or other trade and professional associations.

52.     If, on the basis of those factors, the competent authority finds that the relevantclass of persons, or at least a significant proportion thereof, identify goods asoriginating from a particular undertaking because of the trade mark, it must holdthat the requirement for registering the mark laid down in Article 3(3) of theDirective is satisfied. However, the circumstances in which that requirement may

be regarded as satisfied cannot be shown to exist solely by reference to general,abstract data such as predetermined percentages.

53.     As regards the method to be used to assess the distinctive character of a mark inrespect of which registration is applied for, Community law does not preclude thecompetent authority, where it has particular difficulty in that connection, fromhaving recourse, under the conditions laid down by its own national law, to anopinion poll as guidance for its judgment (see, to that effect, Case C-210/96 GutSpringenheide and Tusky [1998] ECR I-4657, paragraph 37).

54.     In the light of the foregoing, the answer to the questions on the first sentence ofArticle 3(3) of the Directive must be that Article 3(3) is to be interpreted asmeaning that:

—    a trade mark acquires distinctive character following the use which has beenmade of it where the mark has come to identify the product in respect ofwhich registration is applied for as originating from a particular undertakingand thus to distinguish that product from goods of other undertakings;

—    it precludes differentiation as regards distinctiveness by reference to the perceived importance of keeping the geographical name available for useby other undertakings;

—    in determining whether a trade mark has acquired distinctive characterfollowing the use which has been made of it, the competent authority mustmake an overall assessment of the evidence that the mark has come toidentify the product concerned as originating from a particular undertakingand thus to distinguish that product from goods of other undertakings;

—    if the competent authority finds that a significant proportion of the relevantclass of persons identify goods as originating from a particular undertakingbecause of the trade mark, it must hold the requirement for registering themark to be satisfied;

—    where the competent authority has particular difficulty in assessing thedistinctive character of a mark in respect of which registration is applied for,Community law does not preclude it from having recourse, under theconditions laid down by its own national law, to an opinion poll as guidancefor its judgment.

Costs

55.     The costs incurred by the Italian Government and by the Commission of theEuropean Communities, which have submitted observations to the Court, are notrecoverable. Since these proceedings are, for the parties to the main proceedings,

a step in the proceedings pending before the national court, the decision on costsis a matter for that court.

On those grounds,

THE COURT,

in answer to the questions referred to it by the Landgericht München I by ordersof 8 January 1997, hereby rules:

1.    Article 3(1)(c) of the First Council Directive 89/104/EEC of 21 December1988 to approximate the laws of the Member States relating to trade marksis to be interpreted as meaning that:

—    it does not prohibit the registration of geographical names as trade markssolely where the names designate places which are, in the mind of therelevant class of persons, currently associated with the category of goods inquestion; it also applies to geographical names which are liable to be usedin future by the undertakings concerned as an indication of thegeographical origin of that category of goods;

—    where there is currently no association in the mind of the relevant class ofpersons between the geographical name and the category of goods inquestion, the competent authority must assess whether it is reasonable toassume 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 thedegree of familiarity amongst the relevant class of persons with thegeographical name in question, with the characteristics of the placedesignated by that name, and with the category of goods concerned;

—    it is not necessary for the goods to be manufactured in the geographicallocation in order for them to be associated with it.

2.    The first sentence of Article 3(3) of the First Directive 89/104/EEC is to beinterpreted as meaning that:

—    a trade mark acquires distinctive character following the use which hasbeen made of it where the mark has come to identify the product in respectof which registration is applied for as originating from a particularundertaking and thus to distinguish that product from goods of otherundertakings;

—    it precludes differentiation as regards distinctiveness by reference to theperceived importance of keeping the geographical name available for use byother undertakings;

—    in determining whether a trade mark has acquired distinctive characterfollowing the use which has been made of it, the competent authority mustmake an overall assessment of the evidence that the mark has come toidentify the product concerned as originating from a particular undertakingand thus to distinguish that product from goods of other undertakings;

—    if the competent authority finds that a significant proportion of the relevantclass of persons identify goods as originating from a particular undertakingbecause of the trade mark, it must hold the requirement for registering themark to be satisfied;

—    where the competent authority has particular difficulty in assessing thedistinctive character of a mark in respect of which registration is appliedfor, Community law does not preclude it from having recourse, under theconditions laid down by its own national law, to an opinion poll as guidancefor its judgment.

Rodríguez IglesiasKapteynPuissochet

HirschJannMancini

Moitinho de AlmeidaGulmannEdward

Delivered in open court in Luxembourg on 4 May 1999.

R. Grass G.C. Rodríguez Iglesias

RegistrarPresident

1: Language of the case: German.


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