Opinion of the Advocate General — ECLI:EU:C:1998:198
Date: 1998-05-05
Language of the case: German
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: Germany

Summary of the Judgment 
1. Approximation of laws — Trade marks — Directive 89/104 — Where registration of a trade 
mark may be refused or the trade mark declared invalid — Trade mark consisting exclusively 
of an indication of geographical origin — Meaning 
(Council Directive 89/104, Art. 3(l)(c)) 
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SUMMARY —JOINED CASES C-108/97 AND C-109/97 
2. Approximation of laws— Trade marks — Directive 89/104 — Where registration of a trade 
mark may be refused or the trade mark declared invalid — Trade mark devoid of distinctive 
character — Exception — Distinctive character acquired by use — Meaning — Interpretation 
— Criteria 
(Council Directive 89/104, Art. 3(3)) 
1. Article 3(l)(c) of First Directive 89/104 on 
trade marks is to be interpreted as meaning 
that: 
— 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 ques­
tion; 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 rele­
vant class of persons, capable of des­
ignating the geographical origin of that 
category of goods; 
— in making that assessment, particular 
consideration should be given to the 
degree of familiarity amongst the rele­
vant class of persons with the geo­
graphical 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 loca­
tion in order for them to be associated 
with it. 
2. The first sentence of Article 3(3) of the 
First Directive 89/104 on trade marks is to 
be interpreted as meaning that: 
— a trade mark acquires distinctive char­
acter 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; 
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WSC v BOOTS- UND SEGELZUBEHÖR WALTER HUBER AND ATTENBERGER 
— in the case of a trade mark embodying 
an indication of geographical origin, 
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 fol­
lowing the use which has been made 
of it, the competent authority must 
make an overall assessment of the evi­
dence that the mark has come to iden­
tify the product concerned as origin­
ating from a particular undertaking 
and thus to distinguish that product 
from goods of other undertakings; in 
that connection, in the case of a trade 
mark embodying an indication of geo­
graphical origin, regard must be had in 
particular to the specific nature of the 
geographical name in question; 
— if the competent authority finds that a 
significant proportion of the relevant 
class of persons identify goods as origin­
ating 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 par­
ticular difficulty in assessing the dis­
tinctive character of a mark in respect 
of which registration is applied for, 
Community law does not preclude it 
from having recourse, under the con­
ditions laid down by its own national 
law, to an opinion poll as guidance for 
its judgment. 
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