Opinion of the Advocate General — ECLI:EU:C:2002:65
Date: 2002-01-31
Language of the case: Dutch
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: Netherlands

SUMMARY — CASE C-363/99 
S u m m a r y of the J u d g m e n t 
1. Approximation of laws — Trade marks — Directive 89/104 — Registration of a 
new trade mark — Examination of the sign by the competent authority — Taking 
account of all the relevant facts and circumstances 
(Council Directive 89/104, Art. 3) 
2. Approximation of laws — Trade marks — Directive 89/104 — Registration of a 
new trade mark — Examination of the sign by the competent authority — Regis­
tration in another Member State of a similar mark for similar goods or services — No 
effect 
(Council Directive 89/104, Art. 3) 
3. Approximation of laws — Trade marks — Directive 89/104 — Refusal of regis­
tration or invalidity — Marks consisting exclusively of signs or indications which may 
serve to designate the characteristics of goods or services — Existence of more usual 
signs or indications for designating the same characteristics — Number of competitors 
who may have an interest in using the same signs or indications — No effect — 
Whether registration extends, in a system where a number of languages coexist, to 
translations of a word mark — Verification of the translations by the competent 
authority 
(Council Directive 89/104, Art. 3(1)(c)) 
4. Approximation of laws — Trade marks — Directive 89/104 — Refusal of regis­
tration or invalidity — Trade mark devoid of distinctive character — Marks consist­
ing exclusively of signs or indications which may serve to designate the characteristics 
of a product — Relation between the provisions of Article 3(1)(b) and Article 3(1)(c) 
(Council Directive 89/104, Art. 3(1)(b) and (c)) 
5. Approximation of laws — Trade marks — Directive 89/104 — Refusal of regis­
tration or invalidity — Marks consisting exclusively of signs or indications which may 
serve to designate the characteristics of a product — Definition — Word mark 
composed of elements descriptive of characteristics of the goods or services 
concerned — Included where the nature of the combination is not unusual 
(Council Directive 89/104, Art. 3(1)(c)) 
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KONINKLIJKE KPN NEDERLAND 
6. Approximation of laws — Trade marks — Directive 89/104 — Registration of a 
new trade mark — Examination of the sign by the competent authority — Regis­
tration for certain goods or services on condition that they do not possess a particular 
characteristic — Not permissible 
(Council Directive 89/104) 
7. Approximation of laws — Trade marks — Directive 89/104 — Registration of a 
new trade mark — Examination of the sign by the competent authority — Refusal to 
register limited to 'manifestly inadmissible' marks — Not permissible 
(Council Directive 89/104, Art. 3) 
1. Article 3 of First Directive 89/104 on 
trade marks is to be interpreted as 
meaning that a trade mark registration 
authority must have regard, in addition 
to the mark as filed, to all the relevant 
facts and circumstances. 
It must have regard to all the relevant 
facts and circumstances before adopt­
ing a final decision on an application to 
register a trade mark. A court asked to 
review a decision on an application to 
register a trade mark must also have 
regard to all the relevant facts and 
circumstances, subject to the limits on 
the exercise of its powers as defined by 
the relevant national legislation. 
(see para. 37, operative part 1) 
2. The fact that a trade mark has been 
registered in a Member State in respect 
of certain goods or services has no 
bearing on the examination by the 
trade mark registration authority of 
another Member State of an appli­
cation for registration of a similar mark 
in respect of goods or services similar 
to those in respect of which the first 
mark was registered. 
(see para. 44, operative part 2) 
3. Article 3(1)(c) of First Directive 89/104 
on trade marks precludes registration 
of a trade mark which consists exclus­
ively of signs or indications which may 
serve, in trade, to designate character­
istics of the goods or services in respect 
of which registration is sought, and 
that is the case even when there are 
more usual signs or indications for 
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SUMMARY — CASE C-3 63/99 
designating the same characteristics 
and regardless of the number of com­
petitors who may have an interest in 
using the signs or indications of which 
the mark consists. 
Where the applicable national law 
provides that the exclusive right con­
ferred by registration, by a competent 
authority in an area in which a number 
of officially recognised languages 
coexist, of a word mark expressed in 
one of those languages extends auto­
matically to its translation in the other 
languages, the authority must ascertain 
as regards each of those translations 
whether the mark actually consists 
exclusively of signs or indications 
which may serve, in trade, to designate 
characteristics of those goods or ser­
vices. 
(see para. 61 , operative part 3) 
4. Article 3(1) of First Directive 89/104 
on trade marks must be interpreted as 
meaning that a mark which is descrip­
tive of the characteristics of certain 
goods or services but not of those of 
other goods or services for the purposes 
of Article 3(1)(c) of the directive can­
not be regarded as necessarily having 
distinctive character in relation to 
those other goods or services for the 
purposes of subparagraph (b) of the 
provision. 
It is of no relevance that a mark is 
descriptive of the characteristics of 
ce r ta in goods or services unde r 
Article 3(1)(c) of the directive when it 
comes to assessing whether the same 
mark has distinctive character in 
relation to other goods or services for 
the purposes of Article 3(1 )(b) of the 
Directive. 
(see para. 79, operative part 4) 
5. Article 3(1)(c) of First Directive 89/104 
on trade marks must be interpreted as 
meaning that a mark consisting of a 
word composed of elements, each of 
which is descriptive of characteristics 
of the goods or services in respect of 
which registration is sought, is itself 
descriptive of the characteristics of 
those goods or services for the purposes 
of that provision, unless there is a 
perceptible difference between the 
word and the mere sum of its parts: 
that assumes either that because of the 
unusual nature of the combination in 
relation to the goods or services the 
word creates an impression which is 
sufficiently far removed from that pro¬ 
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KONINKLIJKE KPN NEDERLAND 
duced by the mere combination of 
meanings lent by the elements of which 
it is composed, with the result that the 
word is more than the sum of its parts, 
or that the word has become part of 
everyday language and has acquired its 
own meaning, with the result that it is 
now independent of its components. In 
the latter case, it is necessary to ascer­
ta in whe ther a word which has 
acquired its own meaning is not itself 
descriptive for the purposes of the same 
provision. 
For the purposes of de termining 
whether the ground for refusal to 
register set out in Article 3(1)(c) o f 
the directive applies to such a mark, it 
is irrelevant whether or not there are 
synonyms capable of designating the 
same characteristics of the goods or 
services mentioned in the application 
for registration or that the character­
istics of the goods or services which 
may be the subject of the description 
are commercially essential or merely 
ancillary. 
(see para. 104, operative part 5) 
6. First Directive 89/104 on trade marks 
prevents a trade mark registration 
authority from registering a mark for 
certain goods or services on condition 
that they do not possess a particular 
characteristic. 
(see para. 117, operative part 6) 
7. The practice of a trade mark regis­
tration authority which concentrates 
solely on refusing to register 'mani­
festly inadmissible' marks is incompat­
ible with Article 3 of First Directive 
89/104 on trade marks. 
(see para. 126, operative part 7) 
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