Koninklijke KPN Nederland NV v Benelux-Merkenbureau.
Date: 2004-02-12
31. Second, when the competent authority examines a trade mark application and, for that purpose, must determine, inter alia, whether or not the mark is devoid of any distinctive character, whether or not it is descriptive of the characteristics of the goods or services concerned and whether or not it has become generic, it cannot carry out the examination in the abstract.
32. In the course of that examination, it is for the competent authority to have regard to the characteristics peculiar to the mark for which registration is sought, including the type of mark (word mark, figurative mark, etc.) and, in the case of a word mark, its meaning, in order to ascertain whether or not any of the grounds for refusal set out in Article 3 of the Directive apply to the mark.
33. Moreover, since registration of a mark is always sought in respect of the goods or services described in the application for registration, the question whether or not any of the grounds for refusal set out in Article 3 of the Directive apply to the mark must be assessed specifically by reference to those goods or services.
34. A trade mark ' s distinctiveness within the meaning of Article 3(1)(b) of the Directive must be assessed, first, by reference to those goods or services and, second, by reference to the perception of the relevant public, which consists of average consumers of the goods or services in question, who are reasonably well informed and reasonably observant and circumspect (see, inter alia, Joined Cases C-53/01 to C-55/01  Linde and Others  [2003] ECR I-3161, paragraph 41, and Case C-104/01  Libertel  [2003] ECR I-3793, paragraphs 46 and 75).
35. In its assessment, the competent authority has regard to all the relevant facts and circumstances, including, where appropriate, the results of any study submitted by the applicant seeking to establish, for example, that the mark is not devoid of any distinctive character or is not misleading.
36. As to the stage of the examination procedure before the competent authority at which account must be taken of all the relevant facts and circumstances and, where national law provides for the possibility of review by a court of a decision of that authority, whether that court must also have regard to the relevant facts and circumstances, the competent authority 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 for a trade mark registration must also have regard to all the relevant facts and circumstances, subject to the limits on the exercise of its powers as defined by the relevant national legislation.
37. The answer to the first, second and third questions must therefore be that Article 3 of the Directive is to be interpreted as meaning that a trade mark registration authority must have regard, in addition to the mark as filed, to all the relevant facts and circumstances.
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 facts and circumstances, subject to the limits on the exercise of its powers as defined by the relevant national legislation.
The ninth question
44. The answer to the ninth question must therefore be that 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 another Member State of an application for registration of a similar mark in respect of goods or services similar to those in respect of which the first mark was registered.
The fourth question
54. As the Court has already held ( Windsurfing Chiemsee , paragraph 25,  Linde , paragraph 73, and  Libertel , paragraph 52), Article 3(1)(c) of the Directive pursues an aim which is in the public interest, namely that such signs or indications may be freely used by all. Article 3(1)(c) therefore prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks.
55. That public interest requires that all signs or indications which may serve to designate characteristics of the goods or services in respect of which registration is sought remain freely available to all undertakings in order that they may use them when describing the same characteristics of their own goods. Therefore, marks consisting exclusively of such signs or indications are not eligible for registration unless Article 3(3) of the Directive applies.
56. In those circumstances, the competent authority must, under Article 3(1)(c) of the Directive, determine whether a trade mark for which registration is sought currently represents, in the mind of the relevant class of persons, a description of the characteristics of the goods or services concerned or whether it is reasonable to assume that that might be the case in the future (see to that effect  Windsurfing Chiemsee , paragraph 31).  If, at the end of that assessment, the competent authority reaches the conclusion that that is the case, it must refuse, on the basis of that provision, to register the mark.
57. It is irrelevant whether there are other, more usual, signs or indications for designating the same characteristics of the goods or services referred to in the application for registration than those of which the mark concerned consists. Although Article 3(1)(c) of the Directive provides that, if the ground for refusal set out there is to apply, the mark must consist   " exclusively"  of signs or indications which may serve to designate characteristics of the goods or services concerned, it does not require that those signs or indications should be the only way of designating such characteristics.
58. Similarly, whether the number of competitors who may have an interest in using the signs or indications of which the mark consists is large or small is not decisive.  Any operator at present offering, as well as any operator who might in the future offer, goods or services which compete with those in respect of which registration is sought must be able freely to use the signs or indications which may serve to describe characteristics of its goods or services.
67. As regards the first part of the question, 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 a separate examination (see, inter alia,  Linde , paragraph 67).  That is true in particular of the grounds for refusal listed in paragraphs (b), (c) and (d) of Article 3(1), although there is a clear overlap between the scope of the respective provisions (see to that effect Case C-517/99  Merz & Krell  [2001] ECR I-6959, paragraphs 35 and 36).
68. Furthermore, according to 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 in particular  Case C-299/99  Philips  [2002] ECR I-5475, paragraph 77,  Linde , paragraph 71, and  Libertel , paragraph 51).
73. It follows that, where registration of a mark is sought in respect of various goods or services, the competent authority must check, in relation to each of the goods or services claimed, that none of the grounds for refusal listed in Article 3(1) of the Directive applies to the mark and may reach different conclusions depending upon the goods or services in question.
75. As regards the second part of the question, whether a mark has distinctive character must be assessed, as has been observed in paragraph 34 of this judgment, first, by reference to the goods or services in respect of which registration of the mark has been sought, and, second, by reference to the way in which it is perceived by the relevant public, which consists of average consumers of those goods or services, reasonably well informed and reasonably observant and circumspect.
77. However, it is of no relevance that the average consumer of other goods or services, reasonably well informed and reasonably observant, perceives the same mark as descriptive of the characteristics of those other goods or services for the purposes of Article 3(1)(c) of the Directive.
78. It does not follow f rom either Article 3 of the Directive or from any other provisions thereof that the fact that a mark is descriptive of certain goods or services is a ground for refusing to register that mark for other goods or services. As is stated in the seventh recital in the preamble to the Directive, grounds for refusal concerning the trade mark itself are listed exhaustively.
80. As a preliminary point, it is appropriate to observe, first, that the purpose of Article 2 of the Directive is to define the types of signs of which a trade mark may consist (Case C-273/00  Sieckmann  [2002] ECR I-11737, paragraph 43), irrespective of the goods or services for which protection might be sought (see to that effect  Sieckmann , paragraphs 43 to 55,  Libertel , paragraphs 22 to 42, and Case C-283/01  Shield Mark  [2003] ECR I-0000, paragraphs 34 to 41). It provides that a trade mark may consist inter alia of   " words"  and   " letters" , provided that they are capable of distinguishing the goods or services of one undertaking from those of other undertakings.
81. In view of that provision, there is no reason to find that a word like   " Postkantoor"  is not, in respect of certain goods or services, capable of fulfilling the essential function of a trade mark, which is to guarantee the identity of the origin of the marked goods or services to the consumer or end user by enabling him, without any possibility of confusion, to distinguish the goods or services from others which have another origin (see, in particular, Case C-39/97  Canon  [1998] ECR I-5507, paragraph 28,  Merz & Krell , paragraph 22, and  Libertel , paragraph 62). Accordingly, an interpretation of Article 2 of the Directive appears not to be useful for the purposes of deciding the present case.
85. In that regard, and as has been pointed out in paragraph 67 of this judgment, although each of the grounds for refusal listed in Article 3(1) of the Directive is independent of the others and calls for separate examination, there is a clear overlap between the scope of each of the grounds for refusal set out in subparagraphs (b), (c) and (d) of that provision respectively.
86. 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 with regard to the same goods or services within the meaning of Article 3(1)(b) of the Directive. A mark may none the less be devoid of any distinctive character in relation to goods or services for reasons other than the fact that it may be descriptive.
96. If a mark, such as that at issue in the main proceedings, which consists of a word produced by a combination of elements, is to be regarded as descriptive for the purpose 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.
97. 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).
98. As a general rule, a 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 for the purposes of Article 3(1)(c) of the Directive.  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.
99. 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 must be satisfied as regards both the aural and the visual impression produced by the mark.
100. Thus, a mark consisting of a word 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 for the purposes of Article 3(1)(c) of the Directive, unless there is a perceptible difference between the word and the mere sum of its parts: that assumes either 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, or that the word has become part of everyday language and has acquired its own meaning, with the result that it is now independent of its components.  In the second case, it is necessary to ascertain whether a word which has acquired its own meaning is not itself descriptive for the purpose of the same provision.
112. Although an undertaking may apply for registration of a mark in respect of all the goods or services falling within such a class, nothing in the Directive prohibits it from seeking registration solely in respect of only some of those goods or services.
122. In that regard, it is appropriate to observe that although the third recital in the preamble to the Directive states that the full-scale approximation of the trade mark laws of the Member States does not appear necessary at present, the seventh recital makes clear that the conditions for obtaining and continuing to hold a registered trade mark are, in general, identical in all the Member States and that, to that end, the grounds for refusal of registration concerning the trade mark itself are listed exhaustively in the Directive.
123. In addition, the scheme of the Directive is founded on review prior to registration, even though it also makes provision for  ex post facto  review. The examination of the grounds for refusal listed in Article 3 of the Directive in particular, which takes place when registration is applied for, must be thorough and full in order to ensure that trade marks are not improperly registered (see to that effect  Libertel , paragraph 59).