Opinion of the Advocate General — ECLI:EU:C:2001:40
Date: 2001-01-18
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 — CASE C-517/99 
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 — Marks composed 
exclusively of signs or indications which have become customary in the current 
language or in the practices of the trade — Need for a link between the signs or 
indications and the goods or services designated by the mark 
(Council Directive 89/104, Arts 2 and 3(l)(d)) 
2. Approximation of laws — Trade marks — Directive 89/104 — Where registration 
of a trade mark may be refused or the trade mark declared invalid — Marks composed 
exclusively of signs or indications which have become customary in the current 
language or in the practices of the trade — Need for a link between the signs or 
indications and the goods or services designated by the mark — No need for the signs 
or indications to describe the properties or characteristics of the goods or services 
designated by the mark 
(Council Directive 89/104, Art. 3(l)(d)) 
1. The purpose of Article 3(l)(d) of First 
Directive 89/104 to approximate the 
laws of the Member States relating to 
trade marks, which provides that trade 
marks which consist exclusively of 
signs or indications which have become 
customary in the current language or 
trade practices are to be refused regis­
tration, is to prevent the registration of 
signs or indications that are not cap­
able of distinguishing the goods or 
services of one undertaking from those 
of other undertakings and so do not 
satisfy the criterion laid down in Arti­
cle 2 of the Directive. The question 
whether particular signs or indications 
possess distinctive character cannot, 
however, be considered in the abstract 
and separately from the goods or 
services those signs or indications are 
intended to distinguish. 
It follows that Article 3(l)(d) of the 
Directive must be interpreted as only 
precluding registration of a trade mark 
where the signs or indications of which 
the mark is exclusively composed have 
become customary in the current lan­
guage or in the bona fide and estab­
lished practices of the trade to desig­
nate the goods or services in respect of 
which registration of that mark is 
sought. 
(see paras 26, 28-29, 31 
and operative part) 
2. In order for Article 3(1 )(d) of First 
Directive 89/104 to approximate the 
laws of the Member States relating to 
trade marks — which provides that 
trade marks which consist exclusively 
of signs or indications which have 
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MERZ & KRELL 
become customary in the current lan­
guage or trade practices are to be 
refused registration — to be effective, 
the scope of that provision should not 
be limited solely to trade marks which 
describe the properties or characteris­
tics of the goods or services covered by 
them. 
It follows that Article 3(l)(d) of the 
Directive must be interpreted as mean­
ing that it subjects refusal to register a 
trade mark to the sole condition that 
the signs or indications of which the 
trade mark is exclusively composed 
have become customary in the current 
language or in the bona fide and 
established practices of the trade to 
designate the goods or services in 
respect of which registration of that 
mark is sought. It is immaterial, when 
that provision is applied, whether the 
signs or indications in question 
describe the properties or characteris­
tics of those goods or services. 
(see paras 36, 41 and operative part) 
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