CELEX: C2004/085/01
Language: en
Date: 2004-04-03 00:00:00
Title: 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)

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                                       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
                         (Sixth Chamber)                                     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
                       of 12 February 2004                                   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:
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                     1.    Article 3 of First Council Directive 89/104/EEC of 21 Decem-
— Taking account of all the relevant facts and circumstances                       ber 1988 to approximate the laws of the Member States
— Prohibition on registering a mark in respect of certain                          relating to trade marks is to be interpreted as meaning that a
goods or services if they do not possess a particular character-                   trade mark registration authority must have regard, in addition
istic — Word made up of components each of which describes                         to the mark as filed, to all the relevant facts and circumstances.
      characteristics of the goods or services concerned)
                          (2004/C 85/01)                                           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
                    (Language of the case: Dutch)                                  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)
                                                                             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
In Case C-363/99: Reference to the Court under Article 234                         another Member State of an application for registration of a
EC by the Gerechtshof te ’s-Gravenhage (Netherlands) for a                         similar mark in respect of goods or services similar to those in
preliminary ruling in the proceedings pending before that                          respect of which the first mark was registered.
 ---pagebreak--- 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                 For the purposes of determining whether Article 3(1)(c) of
    trade mark which consists exclusively of signs or indications                   Directive 89/104 applies to such a mark, it is irrelevant
    which may serve, in trade, to designate characteristics of the                  whether or not there are synonyms capable of designating the
    goods or services in respect of which registration is sought, and               same characteristics of the goods or services mentioned in the
    that is the case even when there are more usual signs or                        application for registration or that the characteristics of the
    indications for designating the same characteristics and regard-                goods or services which may be the subject of the description are
    less of the number of competitors who may have an interest in                   commercially essential or merely ancillary.
    using the signs or indications of which the mark consists.
                                                                              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.
    Where the applicable national law provides that the exclusive
    right conferred by registration, by a competent authority in an           7.    The practice of a trade mark registration authority which
    area in which a number of officially recognised languages                       concentrates solely on refusing to register >manifestly inadmis-
    coexist, of a word mark expressed in one of those languages                     sible marks is incompatible with Article 3 of Directive 89/104.
    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                (1) OJ C 47 of 19.2.2000.
    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
                                                                                               JUDGMENT OF THE COURT
    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                                   (Sixth Chamber)
    relation to those other goods or services for the purposes of
    subparagraph (b) of the provision.
                                                                                                       of 5 February 2004
                                                                              in Case C-24/00: Commission of the European Communi-
    It is of no relevance that a mark is descriptive of the                                        ties v French Republic (1)
    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            (Failure of a Member State to fulfil obligations — Articles 30
    or services for the purposes of Article 3(1)(b) of the Directive.         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)
5.  Article 3(1)(c) of Directive 89/104 must be interpreted as
    meaning that a mark consisting of a word composed of                                                 (2004/C 85/02)
    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                           (Language of the case: French)
    for the purposes of that provision, unless there is a perceptible
    difference between the word and the mere sum of its parts: that           (Provisional translation; the definitive translation will be published
    assumes either that because of the unusual nature of the                                      in the European Court Reports)
    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            In Case C-24/00, Commission of the European Communities
    part of everyday language and has acquired its own meaning,               (Agents: R. B. Wainwright and O. Couvert-Castéra) with an
    with the result that it is now independent of its components. In          address for service in Luxembourg, v French Republic (Agents:
    the latter case, it is necessary to ascertain whether a word which        initially R. Abraham and R. Loosli-Surrans, and, subsequently,
    has acquired its own meaning is not itself descriptive for the            J.-F. Dobelle andR. Loosli-Surrans) with an address for service
    purposes of the same provision.                                           in Luxembourg: Application for a declaration that: