Keywords

Summary



Keywords

1. Community trade mark — Definition and acquisition of a Community trade mark — Absolute grounds for refusal — Marks composed exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade — Customary nature — Assessment criteria — (Council Regulation No 40/94, Art. 7(1)(d))

2. Community trade mark — Definition and acquisition of the Community trade mark — Absolute grounds for refusal — Marks devoid of distinctive character, descriptive and customary marks — Exception — Acquisition of distinctiveness through use — Assessment criteria — (Council Regulation No 40/94, Art. 7(1)(b), (c) and (d) and (3))

3. Community trade mark — Definition and acquisition of a Community trade mark — Absolute grounds for refusal — Customary mark — Exception — Acquisition of distinctiveness through use — Determined by reference to the perception of the target public — Initiatives taken by the proprietor — Condition for their being taken into account — (Council Regulation No 40/94, Art. 7(1)(d) and (3))

4. Community trade mark — Withdrawal, annulment and invalidity — Grounds for absolute invalidity — Registration contrary to Article 7(1)(d) of Regulation No 40/94 — No acquisition of distinctiveness through use — BSS — (Council Regulation No 40/94, Arts 7(1)(d) and (3), 51(1)(a) and 51(2))

Summary

1. Article 7(1)(d) of Regulation No 40/94 on the Community trade mark prohibits the registration of trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade.

Whether a mark is customary for the purposes of that provision can only be assessed, firstly, by reference to the goods or services in respect of which registration is sought, even though the provision in question does not explicitly refer to those goods or services and, secondly, on the basis of the target public ' s perception of the sign, taking account of the level of attention the average consumer, who is deemed to be reasonably well informed and reasonably observant and circumspect, is likely to pay to the type of goods in question.

see paras 35, 37-38

2. Under Article 7(3) of Regulation No 40/94 on the Community trade mark, the absolute grounds for refusal in paragraph 1(b), (c) and (d) of that article do 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.

In assessing the distinctive character of a mark acquired through use, the following may, inter alia , be taken into account: the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant class of persons who, because of the mark, identify goods as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations. If, on the basis of those factors, the relevant class of persons, or at least a significant proportion thereof, identifies goods as originating from a particular undertaking because of the trade mark, it must be concluded that the requirement for registering the mark laid down in Article 7(3) of Regulation No 40/94 is satisfied.

Distinctive character acquired by use must be assessed, also, in relation to the goods or services in respect of which registration is applied for and in the light of the presumed perception of an average consumer of the category of goods or services in question, who is reasonably well informed and reasonably observant and circumspect. With regard, finally, to the scale of use that is necessary in order to have the registration of a trade mark accepted the distinctive character acquired through the use of that trade mark must be demonstrated in the substantial part of the European Union where it was devoid of any such character under Article 7(1)(b), (c) and (d) of that regulation.

see paras 50-52

3. The question whether a term that has become customary in the current language or in the bona fide and established practices of the trade and thus comes under the absolute ground for refusal to register in Article 7(1)(d) of Regulation No 40/94 on the Community trade mark has acquired distinctive character through use such as to render that provision inapplicable, pursuant to subparagraph (3) thereof, depends in particular on whether the term is perceived by the target public either as a generic name for the product in question or as the distinctive sign of a particular undertaking. Therefore, initiatives by the proprietor of the mark to preserve its distinctiveness are to be taken into consideration in so far as they produce objective results in terms of the perception of the sign amongst the relevant public.

see para. 55

4. BSS, for which registration as a Community trade mark was sought in respect of " ophthalmic pharmaceutical preparations; sterile solutions for ophthalmic surgery" in Class 5 of the Nice Agreement should not have been registered because there was an absolute ground for refusing it under Article 7(1)(d) of Regulation No 40/94 on the Community trade mark relating to the customary nature of the trade mark, since it was established that, in specialist circles, the term BSS had become customary as a generic indication for a Balanced Salt Solution and thus " sterile solutions for ophthalmic surgery" at the time of the applicant ' s application for registration of the mark.

Since it was not established that the mark had acquired distinctive character through use within the meaning of Articles 7(3) and 51(2) of Regulation No 40/94, the Board of Appeal was correct in upholding the decision declaring the mark to be invalid.

see paras 34, 43, 46, 60, 63