Joined Cases C-90/11 and C-91/11

Alfred Strigl — Deutsches Patent- und Markenamt and Securvita Gesellschaft zur Entwicklung alternativer Versicherungskonzepte mbH

v

Öko-Invest Verlagsgesellschaft mbH

(Reference for a preliminary ruling from the Bundespatentgericht)

‛Trade marks — Directive 2008/95/EC — Grounds for refusal or invalidity — Verbal expressions which consist of a word combination and a sequence of letters identical to the initial letters of those words — Distinctive character — Descriptive character — Assessment criteria’

Summary of the Judgment

Approximation of laws — Trade marks — Directive 2008/95 — Registration of a trade mark refused or trade mark declared invalid — Lack of distinctive character — Marks composed exclusively of signs or indications which may serve to designate the characteristics of goods — Meaning

(European Parliament and Council Directive 2008/95, Art. 3(1)(b) and (c))

Article 3(1)(b) and (c) of Directive 2008/95 relating to trade marks must be interpreted as applying to a word mark consisting of the juxtaposition of a descriptive word combination and a letter sequence which is non-descriptive in itself, if the relevant public perceives that sequence as being an abbreviation of that word combination by reason of the fact that it reproduces the first letter of each word of that combination, and if the mark in question, considered as a whole, can thus be understood as a combination of descriptive indications or abbreviations which is therefore devoid of distinctive character.

The letter sequence reproducing the initial letters of the words comprising that word combination occupies only an ancillary position in relation to the word combination. Each of the letter sequences at issue, although not descriptive when considered in isolation, may be descriptive when combined, within the mark at issue, with a principal expression, which itself is descriptive as such, of which it is perceived to be an abbreviation.

(see paras 38, 40, operative part)

Joined Cases C-90/11 and C-91/11

Alfred Strigl — Deutsches Patent- und Markenamt and Securvita Gesellschaft zur Entwicklung alternativer Versicherungskonzepte mbH

v

Öko-Invest Verlagsgesellschaft mbH

(Reference for a preliminary ruling from the Bundespatentgericht)

‛Trade marks — Directive 2008/95/EC — Grounds for refusal or invalidity — Verbal expressions which consist of a word combination and a sequence of letters identical to the initial letters of those words — Distinctive character — Descriptive character — Assessment criteria’

Summary of the Judgment

Approximation of laws — Trade marks — Directive 2008/95 — Registration of a trade mark refused or trade mark declared invalid — Lack of distinctive character — Marks composed exclusively of signs or indications which may serve to designate the characteristics of goods — Meaning

(European Parliament and Council Directive 2008/95, Art. 3(1)(b) and (c))

Article 3(1)(b) and (c) of Directive 2008/95 relating to trade marks must be interpreted as applying to a word mark consisting of the juxtaposition of a descriptive word combination and a letter sequence which is non-descriptive in itself, if the relevant public perceives that sequence as being an abbreviation of that word combination by reason of the fact that it reproduces the first letter of each word of that combination, and if the mark in question, considered as a whole, can thus be understood as a combination of descriptive indications or abbreviations which is therefore devoid of distinctive character.

The letter sequence reproducing the initial letters of the words comprising that word combination occupies only an ancillary position in relation to the word combination. Each of the letter sequences at issue, although not descriptive when considered in isolation, may be descriptive when combined, within the mark at issue, with a principal expression, which itself is descriptive as such, of which it is perceived to be an abbreviation.

(see paras 38, 40, operative part)