Case C-404/02: Reference for a preliminary ruling by the High Court of Justice (England and Wales) (Chancery Division) by order of that court dated 3 September 2002, in the case of Nichols plc against the Registrar of Trade Marks
Date: 2003-01-11
Institutions: Court of Justice
Subjects: brand name, interpretation of the law, trade mark, trade-mark law

11.1.2003

EN

Official Journal of the European Communities

C 7/15

Reference for a preliminary ruling by the High Court of
Justice (England and Wales) (Chancery Division) by order
of that court dated 3 September 2002, in the case of
Nichols plc against the Registrar of Trade Marks

practice, deceiving the public by the use of his own name
or (ii) the Defendant is merely causing unintentional
confusion thereby?

(1) First Council Directive, of 21 December 1988, to approximate
the laws of the Member States relating to trade marks (OJ L 40,
11.02.1989, p. 1).

(Case C-404/02)

(2003/C 7/27)

Reference has been made to the Court of Justice of the
European Communities by an order of
the High Court
of Justice (England and Wales)
(Chancery Division) dated
3 September 2002, which was received at the Court Registry
on 12 November 2002, for a preliminary ruling in the case of
Nichols plc and the Registrar of Trade Marks on the following
questions:

Action brought on 13 November 2002 by the Com-
the
mission of

the European Communities against

Kingdom of Belgium

(Case C-406/02)

(2003/C 7/28)

1.

2.

3.

4.

5.

In what circumstances, if any, must a trade mark (i.e. a
‘sign’ which complies with the requirements of Article 2
of the Trade Marks Directive 89/104/EC (1) consisting of
a single surname be refused registration as being in itself
‘devoid of any distinctive character’ within the meaning
of Article 3(1) (b) of the Directive?

An action against the Kingdom of Belgium was brought
before the Court of Justice of the European Communities on
13 November 2002 by the Commission of the European
represented by Bruno Stromsky, acting as
Communities,
Agent.

In particular (a) must or (b) may such a sign, before it
has acquired distinctive character by use, be refused
registration if it is a common surname in the Member
State in which the trade mark is sought to be registered
or if it is a common surname in one or more of the other
Member States?

If the answer to either Question 2 (a) or (b) is in the
affirmative, is it appropriate for national authorities to
determine the matter by reference to the presumed
expectations of an average customer in relation to the
goods/services in question in the Member State, taking
into account the commonness of the surname, the nature
of the goods/services at issue, and the prevalence (or
otherwise) of the use of surnames in the relevant trade?

Is it of significance for the purpose of determining
whether a surname is ‘devoid of any distinctive character’
within Article 3(1) (b) of the Directive that the effects
of registration of the trade mark are restricted under
Article 6(1) (a)?

If so, (a) is the word ‘person’ in Article 6(1) (a) of the
Directive to be understood as including a corporation or
a business and (b) what amounts to ‘honest practices in
industrial or commercial matters’; in particular, does that
in
expression apply where (i)

the Defendant

is not,

The applicant claims that the Court should:

1. Declare that, by failing to send, within the prescribed
period, the reports relating to Directives 76/464/EEC (1),
78/659/EEC (2) and 80/68/EEC (3) in respect of the Brux-
elles-Capitale Region, the Kingdom of Belgium has failed
to fulfil its obligations under Council Directive 91/692/
EEC of 23 December 1991 standardizing and rationaliz-
ing reports on the implementation of certain Directives
relating to the environment (4);

2. Order the Kingdom of Belgium to pay the costs.

Pleas in law and main arguments

Under Article 2 of Directive 91/692/EEC, Belgium should have
sent to the Commission a report covering the period from
1993 to 1995 inclusive, drawn up on the basis of a question-
naire laid down in Decision 92/446/EEC and sent to Belgium
in good time. Belgium was to have sent the report in question
by 30 September 1996 at the latest. However, not all of
those data were forwarded to the Commission within the
abovementioned period so far as concerns the Bruxelles-
Capitale Region:

— As regards amended Directive 76/464/EEC, no data was

forwarded in respect of the years 1993 to 1995;