Campina Melkunie BV v Benelux-Merkenbureau.
Date: 2004-02-12
18. In that regard, although it is clear from Article 3(1) of the Directive that each of the grounds for refusal listed in that provision is independent of the others and calls for separate examination (see inter alia Joined Cases C-53/01 to C-55/01  Linde and Others  [2003] ECR I-3161, paragraph 67), there is a clear overlap between the scope of the grounds for refusal set out in subparagraphs (b), (c) and (d) of Article 3(1) (see, to that effect, Case C-517/99  Merz & Krell  [2001] ECR I-6959, paragraphs 35 and 36).
19. In particular, a word mark which is descriptive of characteristics of goods or services for the purposes of Article 3(1)(c) of the Directive is, on that account, necessarily devoid of any distinctive character in relation to those goods or services within the meaning of Article 3(1)(b) of the Directive. A mark may none the less be devoid of distinctive character in relation to goods or services for reasons other than the fact that it may be descriptive.
34. By virtue of the Court ' s case-law, the various grounds for refusing registration set out in Article 3 of the Directive must be interpreted in the light of the public interest underlying each of them (see, inter alia, Case C-299/99  Philips  [2002] ECR I-5475, paragraph 77,  Linde , paragraph 71, and Case C-104/01  Libertel  [2003] ECR I-3793, paragraph 51).
35. The Court has recognised that Article 3(1)(c) of the Directive pursues an aim that is in the public interest, which requires that signs and indications descriptive of the characteristics of goods or services in respect of which registration is sought may be freely used by all.  That provision therefore prevents such signs or indications from being reserved to one undertaking alone because they have been registered as trade marks (see Joined Cases C-108/97 and C-109/97  Windsurfing Chiemsee  [1999] ECR I-2779, paragraph 25,  Linde , paragraph 73, and  Libertel , paragraph 52).
37. If a mark, such as that at issue in the main proceedings, which consists of a neologism produced by a combination of elements, is to be regarded as descriptive within the meaning of Article 3(1)(c) of the Directive, it is not sufficient that each of its components may be found to be descriptive.  The word itself must be found to be so.
38. It is not necessary that the signs and indications composing the mark that are referred to in Article 3(1)(c) of the Directive actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates, that those signs and indications could be used for such purposes.  A word must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned (see, to that effect in relation to the identical provisions of Article 7(1)(c) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p.1), Case C-191/01 P  OHIM  v  Wrigley  [2003] ECR I-0000, paragraph 32).
39. As a general rule, the mere combination of elements, each of which is descriptive of characteristics of the goods or services in respect of which registration is sought, itself remains descriptive of those characteristics within the meaning of Article 3(1)(c) of the Directive even if the combination creates a neologism.  Merely bringing those elements together without introducing any unusual variations, in particular as to syntax or meaning, cannot result in anything other than a mark consisting exclusively of signs or indications which may serve, in trade, to designate characteristics of the goods or services concerned.
40. However, such a combination may not be descriptive within the meaning of Article 3(1)(c) of the Directive, provided that it creates an impression which is sufficiently far removed from that produced by the simple combination of those elements.  In the case of a word mark, which is intended to be heard as much as to be read, that condition will have to be satisfied as regards both the aural and the visual impression produced by the mark.
41. Thus, a 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 those characteristics within the meaning of Article 3(1)(c) of the Directive, 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.