Source: EURLEX
Language: en
Format: md

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)**_

(2004/C 85/01)

_(Language of the case: Dutch)_

_(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

court between Koninklijke KPN Nederland NV and BeneluxMerkenbureau, 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._

_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._

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._

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._

_It is of no relevance that a mark is descriptive of the_
_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._

_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.

**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: