CELEX: C2003/007/27
Language: en
Date: 2003-01-11 00:00:00
Title: 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

11.1.2003              EN                  Official Journal of the European Communities                                            C 7/15
Reference for a preliminary ruling by the High Court of                      practice, deceiving the public by the use of his own name
Justice (England and Wales) (Chancery Division) by order                     or (ii) the Defendant is merely causing unintentional
of that court dated 3 September 2002, in the case of                         confusion thereby?
     Nichols plc against the Registrar of Trade Marks
                                                                      (1 ) First Council Directive, of 21 December 1988, to approximate
                                                                           the laws of the Member States relating to trade marks (OJ L 40,
                        (Case C-404/02)                                    11.02.1989, p. 1).
                          (2003/C 7/27)
                                                                      Action brought on 13 November 2002 by the Com-
                                                                      mission of the European Communities against the
Reference has been made to the Court of Justice of the                                        Kingdom of Belgium
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                                       (Case C-406/02)
on 12 November 2002, for a preliminary ruling in the case of
Nichols plc and the Registrar of Trade Marks on the following                                     (2003/C 7/28)
questions:
1.   In what circumstances, if any, must a trade mark (i.e. a         An action against the Kingdom of Belgium was brought
     ‘sign’ which complies with the requirements of Article 2         before the Court of Justice of the European Communities on
     of the Trade Marks Directive 89/104/EC ( 1) consisting of        13 November 2002 by the Commission of the European
     a single surname be refused registration as being in itself      Communities, represented by Bruno Stromsky, acting as
     ‘devoid of any distinctive character’ within the meaning         Agent.
     of Article 3(1) (b) of the Directive?
                                                                      The applicant claims that the Court should:
2.   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             1.     Declare that, by failing to send, within the prescribed
                                                                             period, the reports relating to Directives 76/464/EEC (1),
     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                78/659/EEC (2) and 80/68/EEC (3) in respect of the Brux-
     Member States?                                                          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
3.   If the answer to either Question 2 (a) or (b) is in the
                                                                             relating to the environment (4);
     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           2.     Order the Kingdom of Belgium to pay the costs.
     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?         Pleas in law and main arguments
4.   Is it of significance for the purpose of determining             Under Article 2 of Directive 91/692/EEC, Belgium should have
     whether a surname is ‘devoid of any distinctive character’       sent to the Commission a report covering the period from
     within Article 3(1) (b) of the Directive that the effects        1993 to 1995 inclusive, drawn up on the basis of a question-
     of registration of the trade mark are restricted under           naire laid down in Decision 92/446/EEC and sent to Belgium
     Article 6(1) (a)?                                                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
5.   If so, (a) is the word ‘person’ in Article 6(1) (a) of the       abovementioned period so far as concerns the Bruxelles-
     Directive to be understood as including a corporation or         Capitale Region:
     a business and (b) what amounts to ‘honest practices in
     industrial or commercial matters’; in particular, does that      —      As regards amended Directive 76/464/EEC, no data was
     expression apply where (i) the Defendant is not, in                     forwarded in respect of the years 1993 to 1995;