Merz & Krell GmbH & Co..
Date: 2001-10-04
21 Trade mark rights constitute an essential element in the system of undistorted competition which the Treaty is intended to establish. In such a system, undertakings must be able to attract and retain customers by the quality of their products or services, which is made possible only by distinctive signs allowing them to be identified (see, inter alia, Case C-349/95 Loendersloot [1997] ECR I-6227, paragraph 22).
22 From that point of view, the essential function of the trade mark is to guarantee the identity of the origin of the marked goods or service to the consumer or end user by enabling him, without any possibility of confusion, to distinguish the goods or service from others which have another origin (see, inter alia, Case C-39/97 Canon [1998] ECR I-5507, paragraph 28).
23 That essential function of trade marks has been incorporated by the Community legislature into Article 2 of the Directive, which provides that signs which are capable of being represented graphically may only constitute a trade mark if they are capable of distinguishing the goods or services of one undertaking from those of other undertakings.
35 It must first of all be observed that, although there is a clear overlap between the scope of Articles 3(1)(c) and 3(1)(d) of the Directive, marks covered by Article 3(1)(d) are excluded from registration not on the basis that they are descriptive, but on the basis of current usage in trade sectors covering trade in the goods or services for which the marks are sought to be registered.
36 It follows that, in order for Article 3(1)(d) of the Directive to be effective, the scope of the provision in respect of which the Court's interpretation is sought should not be limited solely to trade marks which describe the properties or characteristics of the goods or services covered by them.
37 In that regard it must be pointed out that signs or indications constituting a trade mark which have become customary in the current language or in the bona fide and established practices of the trade to designate the goods or services covered by that mark are not capable of distinguishing the services of one undertaking from those of other undertakings and do not therefore fulfil the essential function of a trade mark - unless the use which has been made of those signs or indications has enabled them to acquire a distinctive character capable of being recognised under Article 3(3) of the Directive.
39 It also follows that, where the signs or indications concerned have become customary in the current language or in the bona fide and established practices of the trade to designate the goods or services covered by the mark, it is of little consequence that they are used as advertising slogans, indications of quality or incitements to purchase those goods or services.
40 However, registration of a trade mark which consists of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by that mark is not excluded as such by virtue of such use. It is for the national court to determine in each case whether the signs or indications have become customary in the current language or in the bona fide and established practices of the trade to designate the goods or services covered by that mark.