Judgment — ECLI:EU:T:2008:442
Date: 2008-10-15
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;Acquisition of distinctive character through use
Procedure: Action for annulment - unfounded;Action for annulment - successful;Action for annulment - inadmissible
Origin: Austria

Summary of the Judgment 1. Community trade mark – Surrender, revocation and invalidity – Absolute grounds for invalidity (Council Regulation No 40/94, Arts 7(1)(c) and (3) and 51(1)(a) and (2)) 2. Community trade mark – Surrender, revocation and invalidity – Absolute grounds for invalidity (Council Regulation No 40/94, Arts 7(1)(b) to (d) and 51(1)(a) and (2)) 3. Community trade mark – Surrender, revocation and invalidity – Absolute grounds for invalidity (Council Regulation No 40/94, Arts 7(1)(b) to (d) and 51(1)(a) and (2)) 1. The registration of the word sign ‘MANPOWER’ as a Community trade mark for the goods and services in Classes 9, 16, 35, 41 and 42 under the Nice Agreement cannot be declared invalid because of the existence of the ground for refusal under Article 7(1)(c) of Regulation No 40/94 on the Community trade mark. That sign is descriptive, within the meaning of Article 7(1)(c) of that regulation, in the United Kingdom, Ireland, Germany and Austria, of the services, for which it was registered, of an employment agency or a temporary personnel agency in Class 35 of that agreement, from the point of view of the entire population of working age. As regards the United Kingdom and Ireland, the English word ‘manpower’ actually has a sufficiently direct and specific relationship with the services in question to enable the relevant public immediately to perceive, without further thought, a description of those services. As regards Germany and Austria, that term is, according to the Duden dictionary, the equivalent of the term ‘Arbeitskraft’. The relevant German-speaking consumers would therefore establish immediately, without further thought, a specific and direct connection between the word and employment agency or temporary personnel services. All the more so as the word ‘manpower’ is a fashionable word in the German-speaking linguistic frame of reference. The said sign is also descriptive in the United Kingdom, Ireland, Germany and Austria, for most of the goods and services for which it was registered in Classes 9, 16, 41 and 42 of that agreement, from the point of view of the entire population of working age. First, the word can be understood as indicating the content of those goods and services when used in connection with the services of a recruitment agency. In that context, the relevant public, which is the same, moreover, for those goods and services as that defined for the services of an employment agency or a temporary personnel agency in Class 35, would therefore see in the trade mark in question a direct and specific reference to those goods and services. Secondly, in so far as those goods and services include goods and services which are unrelated to recruitment services or temporary placement services, it should be observed that the word ‘manpower’ was registered for each group of goods and services as a whole. On the other hand, in the Netherlands, Sweden, Denmark, Finland and the remaining non-English-speaking Community Member States, the sign is not, from the point of view of the entire population of working age, descriptive of the goods and services for which it was registered in Classes 9, 16, 35, 41 and 42 in the Nice agreement. Indeed, it was not shown that, in the context of the goods and services protected by the trade mark, English was used – albeit only as an alternative to the national language – to address the members of the public to be taken into consideration. That being so, in the United Kingdom, Ireland, Germany and Austria, the trade mark acquired distinctive character by use for the services of an employment agency and temporary personnel agency in Class 35. That distinctive character had to extend to the goods and services protected by the trade mark in other classes. Indeed, the trade mark is descriptive only in relation to some of the goods and services in Classes 9, 16, 41 and 42. The word ‘manpower’ is likely to be understood as indicating the content only of such of those goods and services as are used in connection with the services of an employment agency, and the consumer making the connection between the goods and services in Classes 9, 16, 41 and 42 and the services of an employment or temporary personnel agency could understand the trade mark as indicating that those goods and services originated with the proprietor. (see paras 57-59, 66-68, 79-80, 85, 89-92, 135-141, 144-145) 2. Under Article 51(2) of Regulation No 40/94 on the Community trade mark, where the Community trade mark has been registered in breach of the provisions of Article 7(1)(b), (c) or (d) of that regulation, it may nevertheless not be declared invalid if, in consequence of the use which has been made of it, it has after registration acquired a distinctive character in relation to the goods or services for which it is registered. If Article 51(2) of that regulation had to be understood as not covering the use, after registration, of the trade mark at issue in invalidity proceedings, it would be superfluous and meaningless. Indeed, pursuant to Article 7(3) of Regulation No 40/94 on the Community trade mark, a descriptive sign which, by reason of the use made of it prior to the filing of the application for its registration as a Community trade mark, has acquired distinctive character for the goods or services covered by that application, is to be registered. A trade mark thus registered cannot be declared invalid under Article 51(1)(a) of Regulation No 40/94 since it is not a trade mark ‘registered in breach of the provisions of Article 7’. Article 51(2) of Regulation No 40/94 is therefore wholly irrelevant to that situation. It follows that the latter provision covers only trade marks whose registration contravened the grounds for refusal in Article 7(1)(b) to (d) of Regulation No 40/94 and which, in the absence of such a provision, would have had to be declared invalid pursuant to Article 51(1) of Regulation No 40/94. The precise purpose of Article 51(2) of Regulation No 40/94 is to maintain the registration of such of those marks which, because of the use made of them, have in the meantime – that is to say, after their registration – acquired distinctive character for the goods or services for which they were registered, in spite of the fact that, when it took place, such registration was contrary to Article 7 of Regulation No 40/94. (see para. 127) 3. Under Article 51(2) of Regulation No 40/94 on the Community trade mark, where the Community trade mark has been registered in breach of the provisions of Article 7(1)(b), (c) or (d) of the regulation, it may nevertheless not be declared invalid if, in consequence of the use which has been made of it, it has after registration acquired a distinctive character in relation to the goods or services for which it is registered. The actual date which must be taken into account in the analysis of distinctive character acquired through use after registration is that of the application for the declaration of invalidity. Moreover, the Office for Harmonisation in the Internal Market (Trade Marks and Designs) may, without inconsistency in its reasoning or error of law, take account of material which, even though it post-dated the date of the application, enabled conclusions to be drawn regarding the situation as it was on that date. (see para. 146)