Order — ECLI:EU:C:2004:72
Date: 2004-02-05
Language of the case: German
Court formation: Fourth Chamber
Based on: Treaty establishing the European Economic Community (1957)
Subject matter: Trade marks;Intellectual, industrial and commercial property
Concepts: Appeals;Descriptive marks
Procedure: Action for annulment;Appeal - unfounded
Origin: Austria

Summary of the Order 
1. Community trade mark — Definition and acquisition of the Community trade 
mark — Absolute grounds for refusal — Marks composed exclusively of signs or 
indications which may serve to designate the characteristics of goods or services — 
Aim — Requirement of free availability 
(Council Regulation No 40/94, Art. 7(1) (c)) 
I - 1371 
SUMMARY — CASE C-326/01 P 
2. Community trade mark — Definition and acquisition of the Community trade 
mark — Absolute grounds for refusal — Marks composed exclusively of signs or 
indications which may serve to designate the characteristics of goods or services — 
Definition 
(Council Regulation No 40/94, Art. 7(1)(c)) 
3. Appeals — Grounds — Review by the Court of Justice of the appraisal of the facts 
submitted to the Court of First Instance — Excluded — Word marks for which 
registration as Community trade marks is sought 
(Art. 225 EC; EC Statute of the Court of Justice, Art. 51) 
1. By prohibiting the registration as Com­
munity trade marks of signs or indi­
cations which may serve, in trade, to 
designate characteristics of the goods 
or service in respect of which regis­
tration is sought, Article 7(1)(c) of 
Regulation No 40/94 pursues an aim 
in the public interest, namely that such 
signs or indications may be freely used 
by all. That provision therefore pre­
cludes such signs or indications from 
being reserved to a sole undertaking on 
account of their registration as trade 
marks. 
(see paras 26, 27) 
2. In order for the Office for Harmon­
isation in the Internal Market (Trade 
Marks and Designs) to refuse to reg­
ister a trade mark under Article 7(1)(c) 
of Regulation No 40/94 on the Com­
munity trade mark, it is not necessary 
t h a t the s igns a n d i n d i c a t i o n s 
composing the mark that are referred 
to in that article actually be in use at 
the time of the application for regis­
tration in a way that is descriptive of 
goods or services such as those in 
relation to which the application is 
filed, or of characteristics of those 
goods or services. It is sufficient, as 
the wording of that provision itself 
indicates, that such signs and indi­
cations could be used for such pur­
poses. Thus, under Article 7(1)(c), reg­
istration of a word mark must be 
refused if at least one of its possible 
meanings designates a characteristic of 
the goods or services concerned. 
(see para. 28) 
3. The Court of First Instance's assess­
ment of the facts in the context of an 
action for annulment brought against 
the decision of a Board of Appeal of the 
Office for Harmonisation in the Inter­
na l M a r k e t ( T r a d e M a r k s a n d 
Designs) — which leads that court to 
consider, first, that the word marks for 
I - 1372 
TELEFON & BUCH v OHIM 
which registration is sought have spe­
cific meanings in and are properly 
formed in accordance with the gram­
matical rules of a given language and 
are composed of common words in 
that language and, second, that those 
word marks designate the kind of 
goods and the intended use of the 
services for which registrat ion is 
sought — is not a point of law which 
is subject, as such, to review by the 
Court of Justice on appeal. 
(see paras 30-35) 
I - 1373