Opinion of the Advocate General — ECLI:EU:C:2004:374
Date: 2004-06-17
Language of the case: German
Based on: Treaty establishing the European Economic Community (1957)
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment;Appeal - unfounded
Origin: Germany

Summary of the Judgment 1. Community trade mark – Definition and acquisition of the Community trade mark – Absolute grounds for refusal – Trade marks devoid of any distinctive character – Trade marks consisting of advertising slogans – Distinctive character – Application of specific assessment criteria – Not permissible (Council Regulation No 40/94, Art. 7(1)(b)) 2. Community trade mark – Definition and acquisition of the Community trade mark – Absolute grounds for refusal – Trade marks devoid of any distinctive character – Limitation of the ground for refusal referred to in Article 7(1)(b) of Regulation No 40/94 to trade marks to which the ground for refusal referred to in subparagraph (d) of that provision applies – Not permissible (Council Regulation No 40/94, Art. 7(1)(b) and (d)) 1. In order for it to be assessed as having distinctiveness for the purpose of Article 7(1)(b) of Regulation No 40/94 on the Community trade mark, every trade mark, of whatever category, must be capable of identifying the product as originating from a particular undertaking, and thus distinguishing it from those of other undertakings. Although the criteria for assessing distinctiveness are the same for the various categories of marks, it may become apparent, in applying those criteria, that the relevant public’s perception is not necessarily the same for each of those categories and that, therefore, it may prove more difficult to establish distinctiveness for some categories of mark than for others. However, difficulties in establishing distinctiveness which may be associated with certain categories of trade marks because of their very nature, such as those consisting of advertising slogans – difficulties which it is legitimate to take into account – do not justify laying down specific criteria supplementing or derogating from the criterion of distinctiveness as interpreted in the foregoing. A refusal to register imposing a different and stricter criterion for assessing the distinctiveness of trade marks consisting of advertising slogans, such as ‘imaginativeness’ or even ‘conceptual tension which would create surprise and so make a striking impression’, is therefore incorrect. (see paras 33-34, 36) 2. Each of the grounds for refusal listed in Article 7(1) of Regulation No 40/94 on the Community trade mark is independent of the others and calls for separate examination. Therefore, it is not appropriate to limit the scope of Article 7(1)(b), relating to trade marks which are devoid of any distinctive character, to trade marks for which registration is refused on the basis of Article 7(1)(d) of that regulation, which relates to trade marks which consist of elements which have become customary in the current language or in the practices of the trade, by reason of the fact that they are commonly used in business communications and, in particular, in advertising. To hold that a trade mark is not devoid of distinctive character unless it is demonstrated that it is commonly used in business communications and, in particular, in advertising, therefore constitutes an error of law since such a criterion differs from the one laid down by Article 7(1)(b). (see paras 39-40, 46, 48)