Judgment — ECLI:EU:T:2003:54
Date: 2003-03-05
Based on: Treaty establishing the European Economic Community (1957)
Subject matter: Trade marks;Intellectual, industrial and commercial property
Concepts: Signs of which a trade mark may consist;Marks devoid of any distinctive character
Procedure: Action for annulment - unfounded
Origin: Switzerland;Provisional data

Summary of the Judgment 
1. Community trade mark — Definition and acquisition of a Community trade mark — 
Absolute grounds for refusal — Marks composed exclusively of signs or indications 
which have become customary in the current language or in the bona fide and 
established practices of the trade — Customary nature — Assessment criteria 
(Council Regulation No 40/94, Art. 7(1)(d)) 
II-411 
SUMMARY — CASE T-237/01 
2. Community trade mark — Definition and acquisition of the Community trade 
mark — Absolute grounds for refusal — Marks devoid of distinctive character, 
descriptive and customary marks — Exception — Acquisition of distinctiveness 
through use — Assessment criteria 
(Council Regulation No 40/94, Art. 7(l)(b), (c) and (d) and (3)) 
3. Community trade mark — Definition and acquisition of a Community trade mark — 
Absolute grounds for refusal — Customary mark — Exception — Acquisition of 
distinctiveness through use — Determined by reference to the perception of the target 
public — Initiatives taken by the proprietor — Condition for their being taken into 
account 
(Council Regulation No 40/94, Art. 7(1) (d) and (3)) 
4. Community trade mark — Withdrawal, annulment and invalidity — Grounds for 
absolute invalidity — Registration contrary to Article 7(1)(ď) of Regulation 
No 40/94 — No acquisition of distinctiveness through use — BSS 
(Council Regulation No 40/94, Arts 7(1) (a) and (3), 51(1) (a) and 51(2)) 
1. Article 7(1)(d) of Regulation No 40/94 
on the Community trade mark pro­
hibits the registration of trade marks 
which consist exclusively of signs or 
indications which have become cus­
tomary in the current language or in 
the bona fide and established practices 
of the trade. 
Whether a mark is customary for the 
purposes of that provision can only be 
assessed, firstly, by reference to the 
goods or services in respect of which 
registration is sought, even though the 
provision in question does not 
explicitly refer to those goods or ser­
vices and, secondly, on the basis of the 
target public's perception of the sign, 
taking account of the level of attention 
the average consumer, who is deemed 
to be reasonably well informed and 
reasonably observant and circumspect, 
is likely to pay to the type of goods in 
question. 
(see paras 35, 37-38) 
2. Under Article 7(3) of Regulation 
No 40/94 on the Community trade 
mark, the absolute grounds for refusal 
in paragraph 1(b), (c) and (d) of that 
article do not apply if the trade mark 
has become distinctive in relation to 
the goods or services for which regis­
tration is requested in consequence of 
the use which has been made of it. 
II - 412 
ALCON v OHIM — DR ROBERT WINZER PHARMA (BSS) 
In assessing the distinctive character of 
a mark acquired through use, the 
following may, inter alia, be taken into 
account: the market share held by the 
mark; how intensive, geographically 
widespread and long-standing use of 
the mark has been; the amount invested 
by the undertaking in promoting the 
mark; the proportion of the relevant 
class of persons who, because of the 
mark, identify goods as originating 
from a particular undertaking; and 
statements from chambers of com­
merce and industry or other trade and 
professional associations. If, on the 
basis of those factors, the relevant class 
of persons, or at least a significant 
proportion thereof, identifies goods as 
originating from a particular undertak­
ing because of the trade mark, it must 
be concluded that the requirement for 
registering the mark laid down in 
Article 7(3) of Regulation No 40/94 is 
satisfied. 
Distinctive character acquired by use 
must be assessed, also, in relation to 
the goods or services in respect of 
which registration is applied for and 
in the light of the presumed perception 
of an average consumer of the category 
of goods or services in question, who is 
reasonably well informed and reason­
ably observant and circumspect. With 
regard, finally, to the scale of use that is 
necessary in order to have the regis­
tration of a trade mark accepted the 
distinctive character acquired through 
the use of that trade mark must be 
demonstrated in the substantial part of 
the European Union where it was 
devoid of any such character under 
Article 7(1)(b), (c) and (d) of that 
regulation. 
(see paras 50-52) 
3. The question whether a term that has 
become customary in the current lan­
guage or in the bona fide and estab­
lished practices of the trade and thus 
comes under the absolute ground for 
refusal to register in Article 7(1)(d) of 
Regulation No 40/94 on the Commu­
nity trade mark has acquired distinctive 
character through use such as to render 
that provision inapplicable, pursuant 
to subparagraph (3) thereof, depends in 
particular on whether the term is per­
ceived by the target public either as a 
generic name for the product in ques­
tion or as the distinctive sign of a 
particular undertaking. Therefore, ini­
tiatives by the proprietor of the mark to 
preserve its distinctiveness are to be 
taken into consideration in so far as 
they produce objective results in terms 
of the perception of the sign amongst 
the relevant public. 
(see para. 55) 
4. BSS, for which registration as a Com­
munity trade mark was sought in 
II-413 
SUMMARY — CASE T-237/01 
respect of 'ophthalmic pharmaceutical 
preparations; sterile solutions for oph­
thalmic surgery' in Class 5 of the Nice 
Agreement should not have been regis­
tered because there was an absolute 
ground for refusing it under 
Article 7(1)(d) of Regulation No 40/94 
on the Community trade mark relating 
to the customary nature of the trade 
mark, since it was established that, in 
specialist circles, the term BSS had 
become customary as a generic indi­
cation for a Balanced Salt Solution and 
thus 'sterile solutions for ophthalmic 
surgery' at the time of the applicant's 
application for registration of the 
mark. 
Since it was not established that the 
mark had acquired distinctive char­
acter through use within the meaning 
of Articles 7(3) and 51(2) of Regulation 
No 40/94, the Board of Appeal was 
correct in upholding the decision 
declaring the mark to be invalid. 
(see paras 34, 43, 46, 60, 63) 
II - 414