Judgment — ECLI:EU:T:2005:303
Date: 2005-09-08
Language of the case: German
Court formation: Fifth Chamber
Based on: Treaty establishing the European Economic Community (1957)
Subject matter: Trade marks;Intellectual, industrial and commercial property
Concepts: Word marks
Procedure: Action for annulment - unfounded
Origin: Germany

Summary of the Judgment 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 goods – Word marks DigiFilm and DigiFilmMaker (Council Regulation No 40/94, Art. 7(1)(c)) The word marks DigiFilm and DigiFilmMaker in respect of which registration was sought, as regards both signs, for ‘Storage media, data carriers, in particular optical data carriers, in particular CD-ROMs, including all the aforesaid goods with photographs stored thereon; photographic and cinematographic apparatus and instruments (included in class 9); apparatus for recording, transmission or reproduction of sound and/or images; data-processing apparatus; computers; computer software’ and ‘Recording of data carriers, in particular with digital data, in particular image data, creating photographs; printing of photographs; operating an online print service for photographs’ in Classes 9 and 42 respectively of the Nice Agreement and, as regards the sign DigiFilmMaker also in respect of ‘apparatus and automatic machines for recording data carriers, in particular apparatus for the transfer of digital data (in particular image data) onto data carriers (in particular CD-ROMs)’ in Class 9 of that agreement, are, from the point of view of the average, normally well-informed and reasonably attentive English-speaking consumer, descriptive of the goods and services referred to in the Community trade mark application for the purposes of Article 7(1)(c) of Regulation No 40/94 since there is, for the relevant public, a direct and specific relationship between the signs and the goods and services at issue. First, as regards the elements of which the marks applied for are composed, ‘digi’ is an abbreviation of the word ‘digital’, which is commonly used, notably in the English language, to describe the digital technique, ‘film’ is an English word designating in this language, and in numerous others, both the roll and the finished work or its making and, lastly, the English word ‘maker’, associated like in this case with ‘film’, denotes the film-maker, but also, in the alternative, the apparatus allowing films to be made. Secondly, as regards the marks applied for in their entirety, the juxtapositions of those elements are not more than the sum of their parts. Neither do they constitute neologisms with their own meaning which are therefore independent of their components. (see paras 28-30, 33, 38)