Keywords

Summary



Keywords

1. Community trade mark – Surrender, revocation and invalidity – Application for a declaration of invalidity

(Council Regulation No 40/94, Arts 7(1) and 55(1)(a),(b) and (c))

2. Community trade mark – Surrender, revocation and invalidity – Absolute grounds of invalidity

(Council Regulation No 40/94, Arts 7(1)(c) and 51(1)(a))

Summary

1. Article 55(1)(a) of Regulation No 40/94 on the Community trade mark, which deals, inter alia, with applications for declarations of invalidity based on absolute grounds for invalidity, does not mention any requirement that the applicant for a declaration of invalidity demonstrate the existence of an interest in bringing proceedings. That follows, on the one hand, from the wording of that provision which makes no reference to an interest in bringing proceedings and, on the other, from the scheme of Article 55(1), which provides for applications for a declaration of invalidity based on absolute grounds for invalidity and those based on relative grounds for invalidity to be handled differently.

It is apparent from the scheme of Article 55(1) of Regulation No 40/94 that the legislature intended to permit any natural or legal person and any group or body having the capacity to sue or be sued to bring applications for a declaration of invalidity based on absolute grounds for invalidity whereas, with regard to applications for a declaration of invalidity based on relative grounds for invalidity, it expressly restricted the group of potential applicants for a declaration of invalidity.

That analysis is corroborated by a teleological interpretation of the provisions in question. Unlike relative grounds for refusal, which protect only the private interests of proprietors of certain earlier rights, the absolute grounds for refusal set out in Article 7(1) of Regulation No 40/94 are based on different general interests. In order to ensure the widest protection for those general interests, it must be possible for the widest possible range of persons to rely on the absolute grounds for refusal. That is why Article 55(1)(a) of Regulation No 40/94 merely requires the applicant for a declaration of invalidity to have legal personality or the capacity to sue or be sued, but does not require him to demonstrate an interest in bringing proceedings.

(see paras 20-26)

2. The mark COLOR EDITION should not have been registered as a Community trade mark for ‘Cosmetic and make-up preparations’ in Class 3 of the Nice Arrangement because of the existence of the absolute ground for refusal referred to in Article 7(1)(c) of Regulation No 40/94 on the Community trade mark.

The American English term ‘color’ indicates a colour or shade and is frequently used in the cosmetics industry to designate the use or characteristics of goods. The word ‘edition’ refers not only to the world of literature or of the press, but also means, as the Board of Appeal observed, a range of a product in one or more versions or forms. Just like the term ‘color’, it is also used in the cosmetics industry. Thus the sign COLOR EDITION imparts a message which will immediately and directly be understood by a mainly English-speaking public, or even one which is not so but which has sufficient knowledge of the English language, that is to say that it denotes a range of cosmetic or make-up products in different tones of colour. In addition, the association of the terms ‘color’ and ‘edition’ is not unusual but a normal construction in light of the lexical rules of the English language. The mark applied for does not therefore create, for the target public, an impression sufficiently far removed from that produced by the simple juxtaposition of the verbal elements of which it is composed to alter its meaning or scope. Accordingly, no intellectual effort will be required to understand that message and that the simple juxtaposition of the words in question does not alter the descriptive character of the individual elements of the sign.

(see paras 47-50)