Court of Justice of the European Communities (including Court of First Instance Decisions)

Community law

'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;

...

(g) trade marks which are of such a nature as to deceive the public, for instance as 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 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'.

'1. The trade mark shall not entitle the proprietor to prohibit a third party from using, 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 the service, or other characteristics of goods or services;

...

provided he uses them in accordance with honest practices in industrial or commercial matters'.

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

National law

The main proceedings and the questions referred

- if a mark consists of a descriptive indication within the meaning of Article 3(1)(c) of the Directive represented in an unusual graphic way, then the distinctive character of the mark and the extent to which it is protected are based only on the particular graphic components to be protected. Any likelihood of confusion can result only from a similarity between those components, not from any similarity between the descriptive elements;

- even if the competent authority has registered a trade mark only on the basis of a particular graphic form of a word which it regards as incapable of protection in itself, the court hearing an infringement dispute may take the view that the word itself is none the less entitled to protection and determine the 'overall impression' and distinctive character of the disputed mark differently from the registration authority;

- in order for the main proceedings to be decided, it must be determined whether and, if so, to what extent the interpretation of Article 3(1)(c) of the Directive 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 evaluate a 'serious need to leave free', then the word 'Chiemsee' is automatically covered by Article 3(1)(c), because it may in any event serve to designate the geographical origin of clothing. If, however, consideration must be given to a 'serious need to leave free', then the fact that there is no textile industry on the shores of the Chiemsee must also be taken into account. The plaintiff's products may be designed there, but they are manufactured abroad;

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

- the question then arises whether Article 3(3) of the Directive implies that a sign is capable of registration when it has been used as a trade mark for a sufficient length of time and to a sufficient degree, such that a not inconsiderable proportion of the relevant circles view it as a trade mark or whether, as the German legislature has suggested by its use of the concept of 'trade acceptance' ('Verkehrsdurchsetzung') in Section 8(3) of the Markengesetz, the strict requirements which it has hitherto been German practice to impose continue to apply - which would suggest, inter alia, that the extent of 'trade acceptance' required varies according to how important it is for the designation to be left free ('Freihalteinteresse').

'1. Questions on Article 3(1)(c):

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

Is it of significance for a broader or narrower interpretation of Article 3(1)(c) with respect to geographical indications of origin that the effects of the mark are restricted under Article 6(1)(b)?

Do geographical indications of origin under Article 3(1)(c) cover only those which relate to the manufacture of the goods at that place, or does trade in those goods at that place or from that place suffice, or in the case of the production of textiles does it suffice if they are designed in the region designated 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 a descriptive designation under Article 3(1)(c)?

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

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

Do requirements follow from this provision as to the manner in which descriptive character acquired by use is to be ascertained?'

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

- 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 the goods in respect of which registration of the geographical name for that location as a trade mark is applied for.

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

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

- 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.

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

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

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

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

- a trade mark acquires distinctive character following the use which has been made of it where the mark has come to identify the product in respect of which registration is applied for as originating from a particular undertaking and 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 use by other undertakings;

- in determining whether a trade mark has acquired distinctive character following the use which has been made of it, the competent authority must make an overall assessment of the evidence that the mark has come to identify the product concerned as originating from a particular undertaking and thus to distinguish that product from goods of other undertakings;

- if the competent authority finds that a significant proportion of the relevant class of persons identify goods as originating from a particular undertaking because of the trade mark, it must hold the requirement for registering the mark to be satisfied;

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

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