Judgment — ECLI:EU:C:2009:362
Date: 2009-06-11
Language of the case: English
Court formation: Fifth Chamber
Based on: Treaty establishing the European Economic Community (1957)
Subject matter: Trade marks;Intellectual, industrial and commercial property
Concepts: Acquisition of distinctive character through use
Procedure: Action for annulment;Appeal - unfounded
Origin: United Kingdom

Summary of the Judgment Community trade mark – Definition and acquisition of the Community trade mark – Absolute grounds for refusal – Marks devoid of any distinctive character – Exception – Acquisition of distinctive character through use (Council Regulation No 40/94, Art. 7(3)) Article 7(3) of Regulation No 40/94 on the Community trade mark provides that ‘paragraph 1(b), (c) and (d) shall not apply if the trade mark has become distinctive in relation to the goods or services for which registration is requested in consequence of the use which has been made of it’. It is apparent from the very wording of that provision and more particularly from the use of the verbs in the past tense in the phrases ‘the mark has become’ and ‘in consequence of the use which has been made of it’ that the mark must, at the time of filing of the application for registration, already have acquired distinctive character through prior use. That finding, which relates to the French version of Regulation No 40/94, is borne out by examination of the various other language versions such as, inter alia, the English, German, Italian and Dutch versions. Furthermore, the development of the relevant legislation clearly indicates it was the intention of the Community legislature to grant protection as a Community trade mark only to those marks whose distinctive character had been acquired through use prior to the date of application for registration. Furthermore, a literal interpretation of Article 7(3) of Regulation No 40/94 is the only one compatible with the logic of the system of absolute and relative grounds for refusal in regard to the registration of Community trade marks, according to which the date of filing of the application for registration determines the priority of one mark over another. Moreover, a trade mark which is devoid of any distinctive character at the time when the application for registration is filed might serve as a basis for the application, in the context of opposition proceedings or an application for a declaration of invalidity, of a relative ground for refusal against a second mark whose filing date is after that of the first mark. Such a situation is particularly unacceptable when the second mark already has distinctive character at the time of filing whereas the first has not yet acquired it through use. (see paras 41-44, 51-52)