Opinion of the Advocate General — ECLI:EU:C:2004:30
Date: 2004-01-15
Language of the case: English
Based on: Treaty establishing the European Economic Community (1957)
Subject matter: Intellectual, industrial and commercial property;Approximation of laws
Procedure: Reference for a preliminary ruling
Origin: United Kingdom

summary in nature. Nor, moreover, do I believe that approach to be appropriate from the point of view of judicial policy since, in disputes where Article 12 is relied on, the proprietor of the trade mark will always enjoy an advantage, as a result of the inertia created by general acceptance of the effect of official records, and because of the inherent difficulty of delimiting the descriptive from that which is not descriptive. (17) 52. The foregoing has been confirmed by the Court of Justice very clearly in its judgment in Libertel, (18) in which it considered that Article 6 of the Directive concerns the limits on the effects of a Community trade mark once it has been registered. Furthermore, it stated that the consequence of a minimal review of the grounds for refusal at the time when the application for registration is considered, on the basis that the risk that certain operators might appropriate certain signs which, owing to their very nature, ought to remain available, is neutralised by the limitation mentioned above, is to withdraw the assessment of the grounds for refusal from the competent authority at the time when the mark is registered in order to transfer it to the courts with responsibility for ensuring that the rights conferred by the trade mark can be exercised in practice. That approach is incompatible with the scheme of the Directive, which is founded on an analysis prior to registration, not on an ex post facto review. There is nothing in the Directive to suggest that Article 6 leads to such a conclusion. On the contrary, the number and the detailed nature of the obstacles to registration set out in Articles 2 and 3, and the wide range of remedies available in the event of refusal, suggest that the examination carried out at the time when registration is applied for must not be brief, but must be stringent and thorough in order to prevent trade marks from being improperly registered. (19) 53. Those considerations, relating to Article 6(1)(b) of the Directive (or Article 12(1) of the Regulation) can perfectly well be applied to subparagraph (a). The basic idea is that the provisions on limitation of the effects of trade marks do not affect the type of review carried out when the judgment is made as to whether or not the marks are subject to absolute grounds of refusal. 54. Consequently, the fact that the effects of a trade mark comprising a surname are restricted by virtue of Article 6(1)(a) of the Directive has no impact whatsoever on the assessment of the distinctiveness of the mark in question under Article 3(1)(b). The fifth question 55. The last question was submitted, as is apparent from the order for reference, only in the event of the previous question being answered in the affirmative. That not being the case, it need not be answered. VIII – Conclusion 56. In view of all the foregoing considerations, I propose that the Court of Justice give the following answers to the questions referred to it by the High Court of Justice of England and Wales, Chancery Division: (1) The distinctiveness, for the purposes of Article 3(1) of First Council Directive (89/104/EEC) of 21 December 1988 to approximate the laws of the Member States relating to trade marks, of a sign comprising a surname depends on whether, in relation to the goods or services for which registration is sought, the relevant consumer considers that it identifies the goods and services of an undertaking as compared with those of others. The frequency of occurrence of the surname in question is one of the factors which may be taken into consideration, again in relation to certain goods or services, although it is not decisive. (2) The fact that the effects of a trade mark comprising a surname may be limited pursuant to Article 6(1)(a) of the Directive has no impact whatsoever on the appraisal of its distinctiveness under Article 3(1)(b). 1 – Original language: Spanish. 2 – First Council Directive (89/104/EEC) of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1). 3 – Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended by Council Regulation (EC) No 3288/94 of 22 December 1994 amending Regulation (EC) No 40/94 on the Community trade mark for the implementation of the agreements concluded in the framework of the Uruguay Round (OJ 1994 L 349, p. 83, hereinafter ‘the Regulation’). 4 – PAC 6/00, paragraph 8. 5 – Ibid., paragraph 9. 6 – Nice Agreement concerning International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended. Class 9 Vending machines; electrically-controlled automatic dispensers and token operated dispensers for food and drinks; parts and fittings for all the aforesaid goods. Class 29 Milk and milk powders; preparations made with milk, ad-mixtures of milks, fats, starches and sugars for use in making beverages; dairy toppings; yoghurt and yoghurt drinks; desserts; flavoured extracts from juices made from fruit and vegetables. Class 30 Coffee, tea, cocoa, drinking chocolate; coffee essence, coffee extracts, mixtures of coffee and chicory, all for use as substitutes for coffee; sugar, confectionery, edible ice, cakes and frozen foods; dessert toppings, and preparations for making desserts, drinks. Class 32 Non-alcoholic drinks and preparations for making such drinks; soups and concentrates for making non-alcoholic drinks; fruit flavoured beverages; ice beverages. Class 42 Restaurant, cafeteria and catering services. 7 – See point 6 et seq. above. 8 – Case C-383/99 P Procter & Gamble v OHIM [2001] ECR I-6251. 9 – As is apparent from its actual wording and from that of the seventh recital in the preamble to the Directive. 10 – As appears to be the case – according to the view expressed by the United Kingdom Government at the hearing – with regard to the supply of services such as those of the legal profession. 11 – As, for example, in the case of three-dimensional forms deriving from the shape of the product. 12 – Case C-299/99 Philips [2002] ECR I-5475, paragraphs 47 and 48. 13 – Joined Cases C-108/97 and C-109/97 Windsurfing Chiemsee [1999] ECR I-2779, paragraph 29. 14 – See Case C-210/96 Gut Springenheide and Tusky [1998] ECR I-4657, paragraphs 30 to 32, and Case C-342/97 Lloyd Schuhfabrik [1999] ECR I-3819, paragraph 26. 15 – Opinion in Joined Cases C-456/01 P and C-457/01 P Henkel v OHIM, Joined Cases C-468/01 P to C-472/01 P Procter & Gamble v OHIM, and Joined Cases C-473/01 P and C-474/01 P Procter & Gamble v OHIM [2004] ECR I-5173, paragraph 78 et seq. 16 – See point 16 above. 17 – See points 85 and 86 of my Opinion of 14 May 2002 in Case C-104/00 P DKV v OHIM [2002] ECR I-7561. 18 – Case C-104/01 [2003] ECR I-3793. 19 – Paragraphs 58 and 59.