CELEX: C2000/047/19
Language: en
Date: 2000-02-19 00:00:00
Title: Case C-363/99: Reference for a preliminary ruling by the Gerechtshof te 's-Gravenhage by order of that court of 3 June 1999 in the case of Koninklĳke KPN Nederland NV, formerly known as Koninklĳke PTT Nederland NV, v The Benelux Trade Marks Office

19.2.2000             EN                      Official Journal of the European Communities                                        C 47/11
                   ORDER OF THE COURT                                    1. IV.(a) Must the Benelux Trade Mark Office which, under
                                                                            the Protocol of 2 December 1992 amending the uniform
                        (First Chamber)                                     Benelux law on trade marks (Trb. 1993, 12) (‘BMW’), is
                                                                            charged with assessment of applications for registration
                                                                            on the strict grounds as laid down in Article 3(1) in
                     of 18 November 1999
                                                                            conjunction with Article 2 of the First Council Directive
                                                                            89/104/EEC of 21 December 1988 to approximate the
in Case C-431/98 P: Nicolaos Progoulis v Commission of                      laws of the Member States relating to trade marks (OJ
                the European Communities (1)                                1989 L 40, p. 1), have regard not only to the sign as per
                                                                            the application for registration but to all relevant facts and
 (Appeal — Manifestly inadmissible and unfounded appeal)                    circumstances known to it including those of which it was
                                                                            informed by the applicant (for example that the applicant
                         (2000/C 47/18)                                     prior to the application already used the sign on a large
                                                                            scale as a trade mark of the relevant product or that it
                                                                            appears on inquiry that the sign intended for the goods
                   (Language of the case: French)                           and/or services mentioned in the application will not be
                                                                            capable of misleading the public)?
In Case C-431/98 P: Nicolaos Progoulis, an official of the
Commission of the European Communities, residing in Brus-
sels (Belgium), represented by K. Adamantopoulos and V. Akri-
tidis, of the Athens Bar, with an address for service in                 2. V. Does the reply to Question IV (a) apply also to the
Luxembourg at the Chambers of E. Arendt and C. Medernach,                   assessment of the Benelux Trade Marks Office concerning
8-10 Rue Mathias Hardt — appeal against the order of the                    the question whether its objections to registration of the
Court of First Instance of the European Communities (First                  application have been lifted, as well as to its decision to
Chamber) of 21 September 1998 in Case T-237/97 Progoulis                    refuse registration in whole or in part, as provided for in
v Commission [1998] ECR-SC 1-A-521 and II-1569, seeking                     Article 6 bis (4) of the BMW?
to have that order set aside, the other party to the proceedings
being the Commission of the European Communities (Agent:
J. Currall, assisted by B. Wägenbaur) — the Court (First
Chamber), composed of: L. Sevón (Rapporteur), President of              3. VI. Does the reply to Question IV (a) also apply to the
the Chamber, P. Jann and M. Wathelet, Judges; A. La Pergola,                judicial assessment of the application referred to in
Advocate General; R. Grass, Registrar, has made an order on                 Article 6 ter of the BMW?
18 November 1999, the operative part of which is as follows:
1. The appeal is dismissed.
                                                                         4. IX. (a) In light of the provisions of Article 6(5) B(2) of the
2. Mr Nicolaos Progoulis is ordered to pay the costs.                       Treaty of Paris, do the marks which under Article 3(1)(c)
                                                                            of the directive are not to be registered or, if registered,
(1) OJ C 20 of 23.1.1999.                                                   may be declared invalid, also include marks consisting of
                                                                            signs or names which may serve in commerce to indicate
                                                                            the brand, quality, quantity, designation, value, place of
                                                                            origin or date of manufacture of the goods or provisions
                                                                            of the service or other characteristics of the goods or
                                                                            services even if that configuration is not the only or most
                                                                            usual indication? Does it make any difference in that
                                                                            connection whether there are many or only a few competi-
Reference for a preliminary ruling by the Gerechtshof te
                                                                            tors who may have an interest in using such indications
’s-Gravenhage by order of that court of 3 June 1999 in
                                                                            (cf. judgment of the Benelux Court of 19 January 1981, NJ
the case of Koninklijke KPN Nederland NV, formerly
                                                                            1981, 294, in P. Ferrero & Co S.p.A v Alfred Ritter
known as Koninklijke PTT Nederland NV, v The Benelux
                                                                            Schokoladefabrik GmbH (Kinder)).
                      Trade Marks Office
                        (Case C-363/99)
                                                                            Is it also relevant that under Article 13C of the BMW the
                         (2000/C 47/19)                                     right to a trade mark expressed in one of the national or
                                                                            regional languages of the Benelux area automatically
Reference has been made to the Court of Justice of the                      extends to its translation in another of those languages?
European Communities by order of the Gerechtshof te
’s-Gravenhage (Regional Court of Appeal, The Hague) of
3 June 1999, received at the Court Registry on 1 October
1999, for a preliminary ruling in the case of Koninklijke KPN            5. X. (a) In the assessment of the question whether a sign
Nederland NV, formerly known as Koninklijke PTT Nederland                   consisting of a (new) word made up of components, which
NV, v The Benelux Trade Marks Office on the following                       in themselves have no distinctive character in regard to the
questions:                                                                  goods or services for which the application is made,
 ---pagebreak--- C 47/12               EN                      Official Journal of the European Communities                                        19.2.2000
   answers the description given in Article 2 of the directive           9. XIII. (a) Is it consistent with the scheme of the directive
   (and Article 1 of the BMW ) of a mark, must a (new) word                   and the Treaty of Paris for a sign to be registered for
   of that kind in principle be taken to have a distinctive                   specific goods or services subject to the limitation that the
   character?                                                                 registration applies only to those goods and services in so
                                                                              far as they do not possess a specific characteristic or
                                                                              characteristics (for example, registration of the sign ‘Post-
6. X. (b) If not, must a word of that kind (leaving aside                     kantoor’ for the services: direct-mail campaigns and the
   familiarity through naturalisation) in principle be taken to               issue of franking seals ‘so long as they are not connected
   have no distinctive character, and that that may be                        with a post office’)?
   otherwise only under attendant circumstances which result
   in the combination being more than the sum of its parts?              10. XVI. Is it also material to the answer to be given to the
                                                                              questions whether a corresponding sign for such goods or
                                                                              services is registered as a mark in another Member State?
   Is it of any importance in that connection whether the sign
   is the only or at any rate an obvious term for indicating
   the relevant characteristic or (combination of) character-
   istics, or whether there are synonyms which may reason-
   ably also be used, or that the word indicates a commercially
   essential or rather an incidental attribute of the product or
   service?                                                              Action brought on 9 October 1999 by the Kingdom of
                                                                         the Netherlands against the Commission of the European
                                                                                                     Communities
   Is it also relevant that under Article 13C of the BMW the
   right to a trade mark expressed in one of the national or                                       (Case C-382/99)
   regional languages of the Benelux area automatically
   extends to its translation in another of those languages?                                        (2000/C 47/20)
7. XI. Does the mere fact that a descriptive sign is also lodged         An action against the Commission of the European Communi-
   for registration as a mark for goods and/or services of               ties was brought before the Court of Justice of the European
   which the sign is not descriptive warrant an assessment               Communities on 9 October 1999 by the Kingdom of the
   that the sign thereby has distinctive character as regards            Netherlands, represented by Marc Fierstra, Head of the Euro-
   those goods and/or services (for example the sign ‘Postkan-           pean Law Section of the Legal Affairs Department of the
   toor’ for furniture)?                                                 Ministry of Foreign Affairs, The Hague, acting as Agent.
                                                                         The applicant claims that the Court should:
   If not, in answering the question whether such descriptive
   sign has distinctive character for such goods and/or                  (1) annul Articles 2 and 3 of the Commission’s decision
   services, must regard be had to the possibility that, in light             (C(1999) 2539 final) of 20 July 1999 — notified on
   of its descriptive meaning or meanings, (a part of) the                    5 August 1999 — concerning State aid granted by the
   public will not perceive that sign as a distinctive sign for               Netherlands with regard to 633 Netherlands petrol stations
   (all or some) of those goods or services?                                  in the region bordering Germany;
                                                                         (2) order the Commission to pay the costs.
8. XII. (a) In the assessment of the abovementioned questions
   is significance to be attached to the fact that, since the
   Benelux countries have chosen to have applications for                Pleas in law and main arguments
   registration of trade marks examined by the Benelux Trade             — Infringement of Article 87(1) EC, of the de minimis rule (1)
   Marks Office as a requirement of registration, the appraisal               and of the principles of legal certainty, equal treatment and
   policy of the Office under Article 6 bis of the BMW                        the protection of legitimate expectations, together with
   according to the common commentary of the Govern-                          failure to comply with the obligation, laid down by
   ments ‘must be a cautious and restrained one whereby all                   Article 253 EC, to provide a statement of reasons, all of
   concerns of commercial life must be taken into account                     the foregoing in connection with the categorical refusal to
   and efforts must be focused on establishing which are the                  approve the aid as de minimis aid granted in respect of
   evidently inadmissible applications and refusing them’?                    each individual petrol station where it was applied for by
                                                                              the operator of more than one petrol station: provided that
   If so, under what rules does it fall to be determined whether              the de minimis amount is not made available more than
   an application is ‘evidently inadmissible’?                                once in respect of each individual petrol station, it makes
                                                                              no difference, from an economic standpoint (i.e. as regards
                                                                              trade and competition between Member States), whether
        It is assumed that in contentious invalidity proceedings              the 633 subsidised petrol stations are invariably to be
        (which may be initiated after registration of a sign) in              regarded as separate undertakings or whether, in certain
        pleading invalidity of the sign in respect of which                   cases, they form part of a larger economic entity. Cus-
        registration as a mark was applied for there is no                    tomers will be guided by the brand of petrol offered for
        additional requirement that the sign be ‘evidently                    sale and — above all — by the petrol pump price. A
        inadmissible’.                                                        subsidy granted on a pro rata basis according to the