Judgment of the Court (Sixth Chamber) of 5 February 2004 in Case C-24/00: Commission of the European Communities v French Republic (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)
Date: 2004-04-03
Institutions: Court of Justice
Subjects: European Commission, France, action for failure to fulfil an obligation, consumer protection, food supplement, foodstuff, health risk, public health

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:

3.4.2004

EN

Official Journal of the European Union

C 85/3

— by failing to adopt legislation ensuring the free movement
of foodstuffs for daily consumption and foodstuffs intend-
ed for particular nutritional uses, which are lawfully
manufactured and/or marketed in other Member States
but contain additives (such as vitamins, minerals and
other ingredients) not provided for under French legis-
lation;

JUDGMENT OF THE COURT

(Sixth Chamber)

of 12 February 2004

— by failing to provide for a simplified procedure for having
a substance included on the national list of authorised
additives, which is necessary if the above foodstuffs are
to be marketed in France;

in Case C-265/00 (Reference for a preliminary ruling from
the Cour de justice Benelux): Campina Melkunie BV v
Benelux-Merkenbureau (1)

— by hindering the marketing in France of the above
foodstuffs without establishing that their marketing poses
a risk to public health,

the French Republic has failed to fulfil its obligations under
Article 30 of the EC Treaty (now, after amendment, Article 28
EC), 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 (Rappor-
teur), Judges; J. Mischo, Advocate General; H. von Holstein,
Deputy Registrar, has given a judgment on 5 February 2004,
in which it:

1. Declares that, by failing to provide for a simplified procedure
for having included on the national list of authorised nutrients
those added to foodstuffs for daily consumption and foodstuffs
intended for particular nutritional uses which are lawfully
manufactured and/or marketed in other Member States,

and

by hindering the marketing in France of certain foodstuffs, such
as food supplements and dietary products containing the
substances L-tartrate and L-carnitine, and confectionery and
drinks to which certain nutrients have been added, without
establishing that the marketing of such foodstuffs entails a real
risk for public health,

the French Republic has failed to fulfil its obligations under
Article 30 of the EC Treaty (now, after amendment, Article 28
EC);

2. Dismisses the remainder of the application; Orders the Com-
mission of the European Communities and the French Republic
to pay their own costs.

(1) OJ C 149 of 27.5.2000.

(Approximation of laws — Trade marks — Directive 89/
104/EEC — Article 3(1) — Ground for refusal to register
— Neologism composed of elements each of which is
descriptive of characteristics of the goods or services con-
cerned)

(2004/C 85/03)

(Language of the case: Dutch)

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

In Case C-265/00: Reference to the Court under Article 234
EC by the Benelux-Gerechtshof for a preliminary ruling in the
proceedings pending before that court between Campina
Melkunie BV and Benelux-Merkenbureau, on the interpretation
of Articles 2 and 3(1) 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:

Article 3(1)(c) of First Council Directive 89/104/EEC of 21 Decem-
ber 1988 to approximate the laws of the Member States relating to
trade marks must be interpreted as meaning that a trade mark
consisting of a neologism 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 neologism and the mere
sum of its parts: that assumes 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.