Judgment of the Court (Sixth Chamber) of 12 February 2004 in Case C-363/99 (Reference for a preliminary ruling from the Gerechtshof te's-Gravenhage): Koninklĳke KPN Nederland NV v Benelux-Merkenbureau (Approximation of laws — Trade marks — Directive 89/104/EEC — Article 3(1) — Grounds for refusal to register — Taking account of all the relevant facts and circumstances — Prohibition on registering a mark in respect of certain goods or services if they do not possess a particular characteristic — Word made up of components each of which describes characteristics of the goods or services concerned)
Date: 2004-04-03
Institutions: Court of Justice
Subjects: approximation of laws, interpretation of the law, trade mark

3.4.2004

EN

Official Journal of the European Union

C 85/1

I

(Information)

COURT OF JUSTICE

COURT OF JUSTICE

JUDGMENT OF THE COURT

(Sixth Chamber)

of 12 February 2004

in Case C-363/99 (Reference for a preliminary ruling
from the Gerechtshof te’s-Gravenhage): Koninklijke KPN
Nederland NV v Benelux-Merkenbureau (1)

(Approximation of laws — Trade marks — Directive 89/
104/EEC — Article 3(1) — Grounds for refusal to register
— Taking account of all the relevant facts and circumstances
— Prohibition on registering a mark in respect of certain
goods or services if they do not possess a particular character-
istic — Word made up of components each of which describes
characteristics of the goods or services concerned)

court between Koninklijke KPN Nederland NV and Benelux-
Merkenbureau, on the interpretation of Articles 2 and 3 of
First Council Directive 89/104/EEC of 21 December 1988 to
approximate the laws of the Member States relating to trade
marks (OJ 1989 L 40, p. 1), the Court (Sixth Chamber),
composed of: V. Skouris, acting for the President of the Sixth
Chamber, C. Gulmann, J. N. Cunha Rodrigues, R. Schintgen
and F. Macken (Rapporteur), Judges; D. Ruiz-Jarabo Colomer,
Advocate General; H. von Holstein, Deputy Registrar, has
given a judgment on 12 February 2004, in which it has ruled:

1. Article 3 of First Council Directive 89/104/EEC of 21 Decem-
ber 1988 to approximate the laws of the Member States
relating to trade marks is to be interpreted as meaning that a
trade mark registration authority must have regard, in addition
to the mark as filed, to all the relevant facts and circumstances.

(2004/C 85/01)

(Language of the case: Dutch)

It must have regard to all the relevant facts and circumstances
before adopting a final decision on an application to register a
trade mark. A court asked to review a decision on an application
to register a trade mark must also have regard to all the relevant
facts and circumstances, subject to the limits on the exercise of
its powers as defined by the relevant national legislation.

(Provisional translation; the definitive translation will be published
in the European Court Reports)

In Case C-363/99: Reference to the Court under Article 234
EC by the Gerechtshof te ’s-Gravenhage (Netherlands) for a
preliminary ruling in the proceedings pending before that

2.

The fact that a trade mark has been registered in a Member
State in respect of certain goods or services has no bearing on
the examination by the trade mark registration authority of
another Member State of an application for registration of a
similar mark in respect of goods or services similar to those in
respect of which the first mark was registered.

C 85/2

EN

Official Journal of the European Union

3.4.2004

3. Article 3(1)(c) of Directive 89/104 precludes registration of a
trade mark which consists exclusively of signs or indications
which may serve, in trade, to designate characteristics of the
goods or services in respect of which registration is sought, and
that is the case even when there are more usual signs or
indications for designating the same characteristics and regard-
less of the number of competitors who may have an interest in
using the signs or indications of which the mark consists.

Where the applicable national law provides that the exclusive
right conferred by registration, by a competent authority in an
area in which a number of officially recognised languages
coexist, of a word mark expressed in one of those languages
extends automatically to its translation in the other languages,
the authority must ascertain as regards each of those translations
whether the mark actually consists exclusively of signs or
indications which may serve, in trade, to designate characteristics
of those goods or services.

For the purposes of determining whether Article 3(1)(c) of
Directive 89/104 applies to such a mark,
it is irrelevant
whether or not there are synonyms capable of designating the
same characteristics of the goods or services mentioned in the
application for registration or that the characteristics of the
goods or services which may be the subject of the description are
commercially essential or merely ancillary.

6. Directive 89/104 prevents a trade mark registration authority
from registering a mark for certain goods or services on
condition that they do not possess a particular characteristic.

7.

The practice of a trade mark registration authority which
concentrates solely on refusing to register >manifestly inadmis-
sible marks is incompatible with Article 3 of Directive 89/104.

(1) OJ C 47 of 19.2.2000.

4. Article 3(1) of Directive 89/104 must be interpreted as
meaning that a mark which is descriptive of the characteristics
of certain goods or services but not of those of other goods or
services for the purposes of Article 3(1)(c) of Directive 89/104
cannot be regarded as necessarily having distinctive character in
relation to those other goods or services for the purposes of
subparagraph (b) of the provision.

the
is of no relevance that a mark is descriptive of
It
characteristics of certain goods or services under Article 3(1)(c)
of Directive 89/104 when it comes to assessing whether the
same mark has distinctive character in relation to other goods
or services for the purposes of Article 3(1)(b) of the Directive.

5. Article 3(1)(c) of Directive 89/104 must be interpreted as
meaning that a mark consisting of a word composed of
elements, each of which is descriptive of characteristics of the
goods or services in respect of which registration is sought, is
itself descriptive of the characteristics of those goods or services
for the purposes of that provision, unless there is a perceptible
difference between the word and the mere sum of its parts: that
assumes either that because of the unusual nature of the
combination in relation to the goods or services the word creates
an impression which is sufficiently far removed from that
produced by the mere combination of meanings lent by the
elements of which it is composed, with the result that the word
is more than the sum of its parts, or that the word has become
part of everyday language and has acquired its own meaning,
with the result that it is now independent of its components. In
the latter case, it is necessary to ascertain whether a word which
has acquired its own meaning is not itself descriptive for the
purposes of the same provision.

JUDGMENT OF THE COURT

(Sixth Chamber)

of 5 February 2004

in Case C-24/00: Commission of the European Communi-
ties v French Republic (1)

(Failure of a Member State to fulfil obligations — Articles 30
and 36 of the EC Treaty (now, after amendment, Articles 28
EC and 30 EC) — National legislation exhaustively listing
the nutrients which may be added to foodstuffs — Measure
having equivalent effect — Justification — Public health —
Consumer protection — Proportionality)

(2004/C 85/02)

(Language of the case: French)

(Provisional translation; the definitive translation will be published
in the European Court Reports)

In Case C-24/00, Commission of the European Communities
(Agents: R. B. Wainwright and O. Couvert-Castéra) with an
address for service in Luxembourg, v French Republic (Agents:
initially R. Abraham and R. Loosli-Surrans, and, subsequently,
J.-F. Dobelle andR. Loosli-Surrans) with an address for service
in Luxembourg: Application for a declaration that: