Judgment — ECLI:EU:T:2002:79
Date: 2002-03-20
Language of the case: German
Court formation: Second Chamber, Extended Composition
Based on: Treaty establishing the European Economic Community (1957)
Subject matter: Trade marks;Intellectual, industrial and commercial property
Concepts: Word marks;Descriptive marks
Procedure: Action for annulment - unfounded;Action for annulment - successful
Origin: Germany

Summary of the Judgment 
1. 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 a product — 
Objective — Need to leave a sign or indication free — Scope of the examination 
(Council Regulation No 40/94, Art. 7(l)(c» 
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SUMMARY — CASE T-355/00 
2. Community trade mark — Definition and acquisition of the Community trade 
mark — Application for registration of a sign for all services within a category — 
Appraisal of the descriptive character of the sign in the light of the services as a whole 
(Council Regulation No 40/94, Art. 7(1)(c)) 
3. 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 a product — Signs 
devoid of any distinctive character — 'TELE AID' 
(Council Regulation No 40/94, Art. 7(1)(b) and (c) and (2)) 
4. 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 a product — Appraisal 
of the descriptive character of a sign — Consideration only of the categories of goods 
and/or services covered by the application for registration 
(Council Regulation No 40/94, Art. 7(1)(c)) 
1. Article 7(1)(c) of Regulation No 40/94 
on the Community trade mark, which 
prohibits the signs and indications 
therein referred to from being reserved 
to one undertaking alone because they 
have been registered as trade marks, 
pursues an aim which is in the public 
interest, namely that descriptive signs 
or indications may be freely used by all. 
Application of that provision does not 
depend on there being a real, current or 
serious need to leave a sign free so that 
it is necessary only to consider, on the 
basis of a given meaning of the sign in 
question, whether, from the point of 
view of the intended public, there is a 
sufficiently direct and specific associ­
ation between the sign and the cat­
egories of goods and services in respect 
of which registration is sought. 
(see paras 24, 27-28) 
2. Where registration of a sign as a 
Community mark is applied for, with­
out any distinction being drawn, for a 
category of services in its entirety and 
that sign is not descriptive of all the 
services in that category, the ground for 
refusal referred to in Article 7(1)(c) of 
Regulation No 40/94 nevertheless 
applies to that sign for the whole 
category concerned. 
(see para. 34) 
3. Article 7(1)(c) of Regulation No 40/94 
on the Community trade mark pro­
vides that 'trade marks which consist 
exclusively of signs or indications 
which may serve, in trade, to designate 
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DAIMLKIICHRYSI.F.R v OHIM (TELE AID) 
the kind, quality... intended purpose... 
of the goods or of rendering of the 
service, or other characteristics of the 
goods or service' are not to be regis­
tered. Furthermore, Article 7(2) of 
Regulation No 40/94 provides that 
'paragraph 1 shall apply notwithstand­
ing that the grounds of non-registrabil­
ity obtain in only part of the Commu­
nity'. 
With respect to registration of the term 
'TELE AID' for 'Repair services for 
automobiles; vehicle repair' 'Mobilis­
ing and coordination of accident and 
rescue services', 'Towing and rescue 
services' and 'Computing services for 
determining vehicle location' , that 
term, taken as a whole, must be 
deemed to be capable of designating 
both the kind and the quality of those 
services, given that they represent spe­
cific forms of aid. The fact that the aid 
is provided at a distance must also be 
considered to be a quality of the 
services that the class of persons tar­
geted is liable to take into account 
when making a choice and accordingly 
constitutes an essential characteristic 
thereof. Therefore, from the point of 
view of the class of persons targeted, 
there is a sufficiently direct and con­
crete association between the term 
'TELE AID' and those services, with 
the result that it is covered by the 
prohibition imposed by the aforemen­
tioned provisions. 
With respect to registration of the term 
'TELE AID' in respect of 'Car emerg­
ency telephone systems', the intended 
use of those goods must be considered 
to coincide partially with the descrip­
tion of that category of goods in that it 
expressly refers to emergency call sys­
tems. Goods that enable emergency 
calls to be made may serve to enable 
the services that provide assistance to 
be summoned from a distance. To that 
extent the intended use of those goods 
is for remote assistance and, accord­
ingly, there is, from the point of view of 
the relevant class of persons, a suffi­
ciently direct and concrete association 
between the term 'TELE AID' and 
those goods, with the result that it is 
covered by the prohibition in question. 
However, as regards registration of 
that term for 'Electrical and electronic 
devices for transferring speech and 
data; stationary and mobile trans­
mission, relay and audio receivers and 
devices; data processing equipment and 
parts therefor; navigation devices', and 
for the categories of service listed as: 
'Operation of a communications net­
work' and 'Collection, storage, pro­
cessing and output of information', it 
has not been established that the term 
may serve to indicate their intended 
purpose. Remote assistance, even if it 
requires or involves the use of those 
goods and services, represents at most 
one of many possible areas of use 
thereof, not a technical function, which 
does not suffice to conclude that there 
is a sufficiently direct and concrete 
association between the term 'TELE 
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SUMMARY — CASE T-355/00 
AID' and the goods and services in 
question from the point of view of the 
relevant class of persons. Moreover, it 
has not been established that the term 
'TELE AID' is not distinctive, within 
the meaning of Article 7(1)(b) of Regu­
lation No 40/94, for those goods and 
services. 
(see paras 33, 35, 39, 55) 
4. The descriptiveness of a word sign 
within the meaning of Article 7(1)(c) 
of Regulation No 40/94 on the Com­
munity trade mark must be assessed 
individually by reference to each of the 
categories of goods and/or services 
listed in the application for regis­
tration. For the purposes of assessing 
the descriptiveness of a word sign in 
respect of a particular category of 
goods and/or services, whether the 
applicant for the trade mark in ques­
tion is contemplating using or is 
actually using a particular marketing 
concept involving goods and/or ser­
vices in other categories in addition to 
the goods and/or services within that 
category is immaterial. First, whether 
or not there is a marketing concept is of 
no consequence to the right conferred 
by the Community trade mark and, 
second, since a marketing concept is 
purely a matter of choice for the 
undertaking concerned, it may change 
after a sign has been registered as a 
Community trade mark and it cannot 
therefore have any bearing on the 
assessment of the sign's registrability. 
(see para. 42) 
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