Opinion of the Advocate General — ECLI:EU:C:2005:720
Date: 2005-11-24
Language of the case: Spanish
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: Spain

Summary of the Judgment 1. Free movement of goods – Exceptions – Existence of directives on the approximation of laws (Arts 28 EC and 30 EC; Council Directive 89/104, Art. 3) 2. Approximation of laws – Trade marks – Directive 89/104 – Registration of a trade mark refused or trade mark declared invalid (Council Directive 89/104, Art. 3(1)(b) and (c)) 3. Free movement of goods – Industrial and commercial property – Trade mark right (Arts 28 EC and 30 EC) 1. In a field which has been exhaustively harmonised at Community level, a national measure must be assessed in the light of the provisions of that harmonising measure and not of those of primary law. Consequently, it is Directive 89/104 to approximate the laws of the Member States relating to trade marks, and in particular Article 3 thereof, on the absolute grounds for refusal or invalidity of registration, and not Articles 28 EC and 30 EC, which must be assessed to determine whether Community law precludes the registration of a national trade mark. (see paras 20-21) 2. Article 3(1)(b) and (c) of Directive 89/104 to approximate the laws of the Member States relating to trade marks does not preclude the registration in a Member State, as a national trade mark, of a term borrowed from the language of another Member State in which it is devoid of distinctive character or descriptive of the goods or services in respect of which registration is sought, unless the relevant parties in the Member State in which registration is sought are capable of identifying the meaning of the term. (see paras 26, 32, operative part) 3. In the context of the application of the principle of the free movement of goods, the Treaty does not affect the existence of rights recognised by the legislation of a Member State in matters of intellectual property, but only restricts, depending on the circumstances, the exercise of those rights. The principle of the free movement of goods therefore does not prohibit a Member State from registering as a national trade mark a sign which, in the language of another Member State, is devoid of distinctive character or is descriptive of the goods or services covered by the application for registration. (see paras 28-30)