Keywords

Summary



Keywords

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 - ELLOS

(Council Regulation No 40/94, Art. 7(1)(c) and (2))

2. Community trade mark - Registration procedure - Application to register a sign in respect of several categories of goods or services - Separate analysis of each good or service or category thereof

(Council Regulation No 40/94, Arts 17 and 44)

Summary

1. Under Article 7(1)(c) of Regulation No 40/94 on the Community trade mark, trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the ... intended purpose ... of the goods or of rendering of the service, or other characteristics of the goods or service are not to be registered. Furthermore, Article 7(2) of Regulation No 40/94 provides that [p]aragraph 1 shall apply notwithstanding that the grounds of non-registrability obtain in only part of the Community.

As regards the registration of the word ELLOS sought in respect of clothing, footwear, headgear, that word, as the third person plural pronoun in the Spanish language, may serve, in the Spanish-speaking part of the Community, to designate the purpose of those goods, namely clothing, footwear, headgear for male customers. The conveying of the information about that intended use represents an essential characteristic of the goods in question which is taken into account by the section of the public targeted so that the word ELLOS enables that public to establish immediately, and without further thought, a specific and direct relationship between the sign and the clothing, footwear, headgear for male customers which are included in the category clothing, footwear, headgear. The link thus established appears sufficiently close to be caught by the prohibition laid down in the abovementioned provisions.

As regards the registration of the same word in respect of customer services for mail-order sales, the public targeted will not immediately, and without further thought, establish a specific and direct relationship between those services and the word ELLOS. The evocation of those services or one of their characteristics, to the section of the public targeted, is, at most, indirect and does not enable that public immediately, and without further thought, to perceive a description of the services in question or of one of their characteristics, in particular their intended use so that the relationship between the word ELLOS and customer services for mail-order sales is too indeterminate and vague to be caught by the prohibition laid down in Article 7(1)(c) of Regulation No 40/94.

( see paras 26, 33-35, 37, 42-44 )

2. In examining an application for a Community trade mark in which registration is sought in respect of several categories of goods or services, there are no categories which are subordinate, or ancillary, to others. The fact that an application for a Community trade mark may subsequently be restricted, as regards the list of products or services contained therein, pursuant to Article 44 of Regulation No 40/94, or that the trade mark may be transferred in respect of some of the goods or services under Article 17 of that regulation confirms that each product or service, or category thereof, must be analysed separately.

( see para. 41 )