Judgment — ECLI:EU:T:2002:80
Date: 2002-03-20
Language of the case: German
Court formation: Second Chamber, Extended Composition
Based on: Treaty establishing the European Economic Community (1957)
Subject matter: Trade marks;Intellectual, industrial and commercial property
Concepts: Word marks;Descriptive marks
Procedure: Action for annulment - unfounded;Action for annulment - successful
Origin: Germany

Summary of the Judgment 
1. Community trade mark — Definition and acquisition of the Community trade 
mark — Absolute grounds for refusal — Marks composed exclusively of signs or 
indications which may serve to designate the characteristics of a product — 
Obiective — Need to leave a sign or indication free — Scope of the examination 
(Council Regulation No 40/94, Art. 7(1)'(c)) 
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SUMMARY — CASE T-356/00 
2. Community trade mark — Definition and acquisition of the Community trade 
mark — Application for registration of a sign for all services within a category — 
Appraisal of the descriptive character of the sign in the light of the services as a whole 
(Council Regulation No 40/94, Art. 7(1) (c)) 
3. Community trade mark — Definition and acquisition of the Community trade 
mark — Absolute grounds for refusal — Marks composed exclusively of signs or 
indications which may serve to designate the characteristics of a product — Signs 
devoid of any distinctive character — 'C ARC ARD' 
(Council Regulation No 40/94, Art. 7(l)(b) and (c) and (2)) 
4. Community trade mark — Definition and acquisition of the Community trade 
mark — Absolute grounds for refusal — Marks composed exclusively of signs or 
indications which may serve to designate the characteristics of a product — Appraisal 
of the descriptive character of a sign — Consideration only of the categories of goods 
and/or services covered by the application for registration 
(Council Regulation No 40/94, Art. 7(l)(c)) 
1. Article 7(l)(c) of Regulation No 40/94 
on the Community trade mark, which 
prohibits the signs and indications 
therein referred to from being reserved 
to one undertaking alone because they 
have been registered as trade marks, 
pursues an aim which is in the public 
interest, namely that descriptive signs 
or indications may be freely used by all. 
Application of that provision does not 
depend on there being a real, current or 
serious need to leave a sign free so that 
it is necessary only to consider, on the 
basis of a given meaning of the sign in 
question, whether, from the point of 
view of the intended public, there is a 
sufficiently direct and specific associ­
ation between the sign and the cat­
egories of goods and services in respect 
of which registration is sought. 
(see paras 24, 27-28) 
2. Where registration of a sign as a 
Community mark is applied for, with­
out any distinction being drawn, for a 
category of services in its entirety and 
that sign is not descriptive of all the 
services in that category, the ground for 
refusal referred to in Article 7(1)(c) of 
Regulation No 40/94 nevertheless 
applies to that sign for the whole 
category concerned. 
However, that is not the case where the 
sign in respect of which registration is 
sought is descriptive only of certain 
II - 1964 
DAIMLERCHRYSLER v OHIM (CARCARD) 
services, which, in view of the size of 
the category within which they fall, 
represent only a negligible part of that 
category. 
(see paras 33, 36, 43) 
3. Article 7(1 )(c) of Regulation No 40/94 
on the Community trade mark pro­
vides that 'trade marks which consist 
exclusively of signs or indications 
which may serve, in trade, to designate 
the kind, quality... intended purpose... 
of the goods or of rendering of the 
service, or other characteristics of the 
goods or service' are not to be regis­
tered. Furthermore, Article 7(2) of 
Regulation No 40/94 provides that 
'paragraph 1 shall apply notwithstand­
ing that the grounds of non-registrabil­
ity obtain in only part of the Commu­
nity'. 
As regards, first, registration of the 
word CARCARD for the categories of 
goods listed as 'machine-readable data 
carr iers equipped with p rograms 
and/or data,... in particular magnetic 
cards and/or chip cards and/or credit 
cards', the word 'CARCARD' taken as 
a whole must be considered to be 
capable of designating both the kind 
and quality of those goods. The goods 
actually comprise different kinds of 
card and the fact that they are linked 
to a car must be considered to be a 
quality of the goods that the intended 
public is liable to take into account 
when making its decision and accord­
ingly constitutes an essential character­
istic. Therefore there is a sufficiently 
d i rec t and conc re t e a s soc i a t i on 
between the word 'CARCARD' and 
those goods, from the point of view of 
the intended public. 
Similarly, the word 'CARCARD' is 
also capable of designating the quality 
of the categories of service listed as 
'issuing of credit cards and/or magnetic 
cards and/or chip cards; issuing of 
identification cards for granting access 
to and/or payment of goods and ser­
vices such as services and/or guarantee 
services and/or bonus systems and/or 
incentives and/or recycling', given that 
those services relate to the marketing of 
cards. 
As regards registration of that word for 
services provided in relation to the 
leasing of motor vehicles, arranging 
fuel supplies and car maintenance, 
arranging of telecommunication ser­
vices, ar ranging and/or rental of 
vehicles and database services, those 
services must be regarded as having a 
direct connection with the operation 
and use of a car. The fact that they can 
be accessed and paid for by means of a 
card that is linked to a car is thus an 
aspect of those services that the 
intended public is liable to take into 
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SUMMARY — CASE T-356/00 
account when making its decision, so 
that, from the point of view of the 
intended public, there is a sufficiently 
direct and specific association between 
the word 'CARCARD' and those ser­
vices. 
It follows that the word 'CARCARD' 
may, from the point of view of the 
intended public, serve to designate the 
essential characteristics of the goods 
and services in the categories listed 
above, within the meaning of 
Ar t i c le 7 ( l ) ( c ) of R e g u l a t i o n 
No 40/94. 
Second, as regards registration for 
goods falling within the categories 
listed as 'stationary and transportable 
data processing equipment; programs 
on data carriers for data and/or text 
and/or image processing', the word 
'CARCARD' does not appear to be 
capable of serving to designate any 
quality of those goods. Furthermore, 
even if the goods might be used in a 
way that involves a card linked to a 
car, that is not sufficient to infer that 
'CARCARD' may serve to designate 
the intended use of the goods in ques­
tion since such use of the goods con­
stitutes at most one of many possible 
areas of use thereof, but not a technical 
function. Nor, finally, can the word 
'CARCARD' be said to serve to desig­
nate any other essential characteristic 
of these goods. 
As regards registration of that word for 
services relating to the arranging and 
processing of the payment of charges, 
arranging of services and guarantees, 
arranging of telecommunications ser­
vices and rental and leasing of data 
processing equipment, those services 
do not appear to have any immediate 
connection with the operation or use of 
a car. Thus, even if the fact that they 
can be accessed and paid for using a 
card is a quality that the relevant class 
of persons might take into account 
when making a decision, the fact that 
the card is linked to a car cannot be 
regarded as an additional factor in that 
decision. Given that the descriptiveness 
of a sign composed of various elements 
must be assessed in the light of each 
component and not just one of them, 
the word 'CARCARD', taken as a 
whole, cannot serve to designate any 
quality of those services. Nor, fur­
thermore, does that word appear to 
be capable of designating the intended 
use or any other essential characteristic 
of the services in question. 
It follows that, from the point of view 
of the intended public, the word 
II - 1966 
DAIMLERCHRYSLER v OHIM (CARCARD) 
'CARCARD' cannot serve, for the 
purposes of Article 7(1 )(c) of Regu­
lation No 40/94, to designate one of 
the essential characteristics of the 
goods and services falling within the 
categories referred to second. 
Moreover, it has not been established 
that the word 'CARCARD' is not 
distinctive of those goods and services 
within the meaning of Article 7(1 )(b) 
of Regulation No 40/94. 
(see paras 32-35, 37, 39-42, 44, 47, 59) 
4. The descriptiveness of a sign within the 
meaning of Article 7(1 )(c) of Regu­
lation No 40/94 on the Community 
trade mark must be assessed individ­
ually by reference to each of the 
categories of goods and/or services 
listed in the application for regis­
tration. For the purposes of assessing 
a sign's descriptiveness in respect of a 
particular category of goods or service, 
whether the applicant for the trade 
mark in question is contemplating 
using or is actually using a particular 
marketing concept involving goods and 
services in other categories in addition 
to the goods and services within that 
category is immaterial. First, whether 
or not there is a marketing concept is of 
no consequence to the right conferred 
by the Community trade mark and, 
second, since a marketing concept is 
purely a matter of choice for the 
undertaking concerned, it may change 
after a sign has been registered as a 
Community trade mark and it cannot 
therefore have any bearing on the 
assessment of the sign's registrability. 
(see para. 46) 
II - 1967