Keywords

Summary



Keywords

1. Community trade mark – Definition and acquisition of the Community trade mark – Absolute grounds for refusal – Trade marks devoid of any distinctive character – Three-dimensional mark – Shape of a lighter

(Council Regulation 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 – Exception – Acquisition through use – Criteria for assessment

(Council Regulation 40/94, Art. 7(3))

Summary

1. From the point of view of the average consumer, the three-dimensional sign comprising the shape of a lighter characterised by an upright, oval reservoir, a trapezoidal hood and a semi-oval push button, registration has been sought for ‘tobacco, smoker’s articles, lighters, matches’ in class 34 of the Nice Agreement, is devoid of any distinctive character – for the purposes of Article 7(1)(b) of Regulation No 40/94 on the Community trade mark – in relation to the goods concerned, in so far as the three-dimensional trade mark applied for consists of a combination of presentational features which come naturally to mind and which are typical of the goods concerned. The shape is not markedly different from various basic shapes for the goods in question which are commonly used in trade, but is a variation of those shapes. It follows that none of the elements of the trade mark, whether taken in isolation or in conjunction with the others, has any distinctive character.

(see para. 34)

2. The acquisition of a distinctive character through use of a Community trade mark, as provided for in Article 7(3) of Regulation No 40/94, requires, first, that at least a significant proportion of the relevant section of the public identifies the products or services concerned as originating from a particular undertaking because of the mark. Second, the distinctive character acquired in consequence of the use of that mark must be demonstrated in the substantial part of the Community where it was devoid of any such character under Article 7(1)(b), (c) and (d) of that regulation. Third, the competent authority must make an overall assessment of the evidence that the mark has come to identify the product concerned as originating from a particular undertaking, and thus to distinguish that product from goods of other undertakings. In that regard, account must be taken of, inter alia, 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 interested parties who identify the product as originating from a particular undertaking because of the mark, statements from chambers of commerce and industry or other trade and professional associations as well as opinion polls. Fourth, the distinctiveness of a mark, including distinctiveness acquired through use, must be assessed in relation to the goods 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 in question, who is reasonably well-informed and reasonably observant and circumspect. Finally, a mark must have become distinctive through use before the application was filed.

(see paras 61-66)