Keywords

Summary



Keywords

1. Community trade mark – Definition and acquisition of the Community trade mark – Absolute grounds for refusal – Separate examination of the various grounds for refusal

(Council Regulation No 40/94, Art. 7(1)(b) and (c))

2. Community trade mark – Definition and acquisition of the Community trade mark – Absolute grounds for refusal – Separate examination of the grounds for refusal with regard to each of the goods or services covered by the application for registration

(Council Regulation No 40/94, Arts 7(1) and 73)

Summary

1. Each of the grounds for refusal listed in Article 7(1) of Regulation No 40/94 on the Community trade mark must be interpreted in the light of the public interest underlying each of them, each being independent of the others and calling for separate examination. The public interest taken into account in the examination of each of those grounds for refusal may, or even must, reflect different considerations, depending on which ground for refusal is at issue.

In that context, the public interest underlying Article 7(1)(b) of Regulation No 40/94 relates, first, to the need not unduly to restrict the availability of the sign for which registration is sought for the other traders who offer for sale goods or services of the same type as those in respect of which registration is sought and, second, to guarantee the identity of the origin of the marked products or services to the consumer or end-user by enabling him, without any possibility of confusion, to distinguish those goods or services from others which have a separate origin. Such a guarantee constitutes the essential function of the trade mark.

Article 7(1)(c) of Regulation No 40/94 pursues an aim which is in the public interest, namely that descriptive signs or indications relating to the characteristics of goods or services in respect of which registration is sought may be freely used by all. That provision accordingly precludes such signs or indications from being reserved to one undertaking alone on the ground that they have been registered as trade marks.

It follows that there is a clear overlap between the respective scopes of the grounds set out in Article 7(1)(b) and (c) of Regulation No 40/94. In particular, it is clear from the case-law that a word mark which is descriptive of characteristics of goods or services within the meaning of Article 7(1)(c) of Regulation No 40/94 is, for that reason, liable in principle to be regarded as also lacking distinctive character with regard to those same goods or services within the meaning of Article 7(1)(b) of that regulation. However, that is a matter which must be separately demonstrated.

(see paras 23-26)

2. It follows that there is a clear overlap between the respective scopes of the grounds set out in Article 7(1)(b) and (c) of Regulation No 40/94 on the Community trade mark. In particular, it is clear from the case-law that a word mark which is descriptive of characteristics of goods or services within the meaning of Article 7(1)(c) of Regulation No 40/94 is, for that reason, liable in principle to be regarded as also lacking distinctive character with regard to those same goods or services within the meaning of Article 7(1)(b) of that regulation. However, that is a matter which must be separately demonstrated.

It follows that, where registration of a mark is sought in respect of various goods or services, the Office for Harmonisation in the Internal Market (Trade Marks and Designs) must determine specifically that none of the grounds for refusal of registration listed in Article 7(1) of Regulation No 40/94 applies to the mark in question, in relation to each of those goods or services claimed, and may reach conclusions which differ depending upon the goods or services in question. Therefore, when refusing registration of a trade mark, the Board of Appeal is required to state in its decision its conclusion for each of the goods and services specified in the application for registration, regardless of the manner in which that application was formulated. However, where the same ground for refusal is given for a category or group of goods or services, the competent authority may limit itself to using general reasoning for all of the goods or services concerned.

In that context, the option for the Board of Appeal to use general reasoning for a series of goods or services can extend only to goods or services which have a sufficiently direct and specific link to each other to the extent that they form such a sufficiently homogenous category as to enable all the factual and legal considerations constituting the grounds of the decision in question, first, to explain adequately the reasoning followed by the Board of Appeal for each of the goods and services belonging to that category and, second, to be applied without distinction to each of the goods or services concerned. The mere fact that the goods and services in question are in the same class under the Nice Agreement is not sufficient, for that purpose, since those classes often contain a wide variety of goods or services which do not necessarily have a sufficiently direct and specific link to each other.

(see paras 26-28)