J. Portugal Ramos Vinhos SA v Adega Cooperativa de Borba CRL.
Date: 2018-12-06
16


The Court has already held, regarding First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1), that Article (3)(1)(c) of that directive, whose wording is, in essence, identical to that of Article (3)(1)(c) of Directive 2008/95, pursues an aim that is in the public interest, which requires that signs or indications describing categories of goods or services for which registration is sought may be freely used by all, including as collective trade marks or as part of composite or graphic trade marks (judgments of 4 May 1999, Windsurfing Chiemsee, C‑108/97 and C‑109/97, EU:C:1999:230, paragraph 25, and also of 6 May 2003, Libertel, C‑104/01, EU:C:2003:244, paragraph 52).
17


The Court has also interpreted 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), whose wording is also essentially identical to that of Article 3(1)(c) of Directive 2008/95, as meaning that the signs and indications referred to in this provision are thus only those that may serve, in normal usage from a consumer’s point of view, to designate either directly or by reference to one of their essential characteristics, goods or services such as those in respect of which registration is sought (judgment of 20 September 2001, Procter & Gamble v OHIM, C‑383/99 P, EU:C:2001:461, paragraph 39).
18


By using, in Article 3(1)(c) of Directive 2008/95, the terms ‘the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service’, the EU legislature made it clear, first, that those terms must all be regarded as characteristics of goods or services and, secondly, that that list is not exhaustive, since any other characteristics of goods or services may also be taken into account (see, to this effect, the judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 49, and of 10 July 2014BSH v OHIM, C‑126/13 P, not published, EU:C:2014:2065, paragraph 20).
19


On that basis, the fact that the Union legislature chose to use the word ‘characteristic’ highlights the fact that the signs referred to in that provision are merely those which serve to designate a property, easily recognisable by the relevant class of persons, of the goods or the services in respect of which registration is sought (see, to this effect, the judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 50, and of 10 July 2014, BSH v OHIM, C‑126/13 P, not published, EU:C:2014:2065, paragraph 21).
20


Therefore, a sign can be refused registration on the basis of Article 3(1)(c) of Regulation No 2008/95 only if it is reasonable to believe that it will actually be recognised by the relevant class of persons as a description of one of those characteristics (see, to this effect, the judgment of 10 July 2014BSH v OHIM, C‑126/13 P, not published, EU:C:2014:2065, paragraph 22).
27


Furthermore, the fact that a term used to designate a place of production of goods, or a facility in which the goods are produced, is part of various word elements of the corporate name of a legal person is irrelevant for the purposes of examining the descriptive character of that term, having regard to the fact that such an examination is carried out by reference to the goods for which registration of the trade mark is sought and by reference to its perception by the relevant public (see, to that effect, judgments of 12 February 2004, Koninklijke KPN Nederland, C‑363/99, EU:C:2004:86, paragraph 75, and of 12 July 2012, Smart Technologies v OHIM, C‑311/11 P, EU:C:2012:460, paragraph 24).