Opinion of the Advocate General — ECLI:EU:C:2003:225
Date: 2003-04-10
Based on: Treaty establishing the European Economic Community (1957)
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment;Appeal - successful
Origin: Provisional data;United States

Summary of the Judgment 
Community trade mark — Definition and acquisition of a Community trade mark — 
Absolute grounds for refusal — Trade marks which consist exclusively of signs or 
indications which may serve to designate the characteristics of the goods — Concept 
(Council Regulation No 40/94, Art. 7(1)(c)) 
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SUMMARY — CASE C-191/01 P 
Article 7(1) (c) of Regulation No 40/94 on 
the Community trade mark provides that 
trade marks which 'consist exclusively of 
signs or indications which may serve, in 
trade, to designate the kind, quality, quan­
tity, intended purpose, value, geographical 
origin, time of production of the goods or 
of rendering of the service, or other char­
acteristics of the goods or service' are not to 
be registered. 
In order for the Office for Harmonisation 
in the Internal Market (Trade Marks and 
Designs) to refuse to register a trade mark 
under that article, it is not necessary that 
the signs and indications composing the 
mark that are referred to in that article 
actually be in use at the time of the 
application for registration 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 indications could be used for such 
purposes. A sign must therefore be refused 
registration under that provision if at least 
one of its possible meanings designates a 
characteristic of the goods or services 
concerned. 
To interpret Article 7(1)(c) of Regulation 
No 40/94 as precluding the registration of 
trade marks which are 'exclusively descrip­
tive' of the goods or services in respect of 
which registration is sought, or of their 
characteristics, implies the application of a 
test which is not the test laid down by that 
article and disregards the scope thereof. 
(see paras 29, 32-34, 36) 
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