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Published: Fri, 02 Feb 2018
Application of The Trade Marks Directive (89/104/EEC)
Brief : 188472
Delivery Time : 29/05/06
Title: Trademarks Law: (Qs) “The European Court of Justice has now provided clear and sensible guidance on the circumstances in which a mark can be regarded as ‘devoid of distinctive character’ or descriptive of the characteristics of goods, and thus is to be refused registration under Article 3(1)(b) and (c) of the Trade Marks Directive (89/104/EEC) (and Articles 7(1)(b) and (c) of the Community trade Mark Regulation, No 40/94).” Critically discuss.
The Trade Marks Directive (89/104/EEC) applies, as Article 1 provides, to “every trade mark in respect of goods or services which is the subject of registration or of an application in a Member State for registration as an individual trade mark, a collective mark or a guarantee or certification mark, and to international registrations having effect in a Member State”.
Article 3(1) of the Directive provides, inter alia, that the following shall not be registered or if registered shall be liable to be declared invalid:
(b) trade marks which are devoid of any distinctive character;
(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate 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;
Regulation 40/94 establishes law on the Community trade mark. Article 6 of the Regulation provides that a Community trade mark shall be obtained by registration and Article 7 provides absolute grounds for refusal of registration, including, inter alia those grounds in 7 (1)(b) and 7 (1)(c) which mirror the terms of Article 3(1) (b) and (c) of the Trade Marks Directive.
This litigious area of intellectual property law has been the subject of detailed review by the European Court of Justice. Detailed commentary on a selected recent case follows below and other decisions are drawn on to support the analysis offered.
Nicols v Register of Trade Marks (2004)
In Case 404/02 Nicols plc v Registrar of Trade Marks, decided by the European Court in 2004, an application was made to the Registrar of Trade Marks for registration of the surname ‘Nichols’ as a trademark for products including vending machines, and food and drink of the kind typically dispensed by such machines. The Registrar of Trade Marks granted the application in respect of vending machines, but refused it in respect of all other products. This decision was taken on the grounds that whereas the market in vending machines is highly specialised, the market in food and drink products is far too large to be subject to a trade mark comprised of a common British surname (something which was ascertained by simple perusal of the London telephone directory) and therefore a mark in the form of that surname was considered to be devoid of any distinctive character in respect of food and drink products.
The High Court invoked the Article 234 EC preliminary reference procedure to ask the Court of Justice for answers to the following questions:
“1. In what circumstances, if any, must a trade mark (ie a “sign” which complies with the requirements of Article 2 of the Trade Marks Directive 89/104/EC) consisting of a single surname be refused registration as being in itself “devoid of any distinctive character” within the meaning of Article 3(1)(b) of the Directive?
2. In particular (a) must or (b) may such a sign, before it has acquired distinctive character by use, be refused registration if it is a common surname in the Member State in which the trade mark is sought to be registered or if it is a common surname in one or more of the other Member States?
3. If the answer to either Question 2(a) or (b) is in the affirmative, is it appropriate for national authorities to determine the matter by reference to the presumed expectations of an average customer in relation to the goods/services in question in the Member State, taking into account the commonness of the surname, the nature of the goods/services at issue, and the prevalence (or otherwise) of the use of surnames in the relevant trade?
4. Is it of significance for the purpose of determining whether a surname is “devoid of any distinctive character” within Article 3(1)(b) of the Directive that the effects of registration of the trade mark are restricted under Article 6(1)(a)?”
The Court of Justice ruled that Article 2 of Directive 89/104 contains a list in the seventh recital in the preamble to the directive, of signs which might constitute a trade mark, provided that such distinguish the goods or services of one undertaking from those of others, that is to say to fulfil the trade mark’s function as an indicator of origin and that that list expressly includes ‘personal names’.
As the Court had previously found in Case C-299/99 Philips and Case C-218/01 Henkel, under Article 3(1)(b) and (c) of Directive 89/104, the distinctive character of a mark must be assessed with a view to the goods or services in respect of which registration is applied for, taking into full account the perception of the relevant consumers. It is argued that this market-oriented approach is essential in the wider circumstances of this intellectual property analysis and that it was appropriate to apply it in this case.
In this context, as the ruling in Joined Cases C-53/01 to C-55/01 Linde and Others confirms, the provision concerned does not distinguish between different categories of trade mark. It is submitted that this apposite policy was mirrored in Case C-445/02 P Glaverbel v OHIM in regard to the identical provision in Article 7(1)(b) of Regulation 40/94 on the Community trade mark, and this is important for the sake of certainty and clarity of the law in this field.
It is submitted therefore that it follows that the criteria for assessment of the distinctive character of trade marks constituted by a personal name are identical to those applicable to the other categories of trade mark. Moreover it must follow that stricter criteria, such as conditions relating to the prevalence of surnames in the relevant trade or some predetermined number of uses of the same name, cannot therefore be applied in this context.
The case law suggests that the distinctive character of a trade mark, in whatever category, must be the subject of a specific assessment. However, it is argued that the perception of the so-called ‘relevant public’ is not necessarily the same for all the different categories and it could ultimately prove more difficult to establish the distinctive character of trade marks in certain categories than that of those in other categories. Again, Henkel is a case in point in regard to Article 3(1)(b) and (c) of Directive 89/104, and in relation to Article 7(1)(b) of Regulation No 40/94, Case C-468/01 P Proctor & Gamble v OHIM applies the same policy.
Returning to Nicols, it was made clear that in the same way as a term used in everyday language, a common surname may serve the trade mark function of indicating origin and distinguishing the product concerned where is it not subject to a ground of refusal of registration other than the one in Article 3(1)(b) of Directive 89/104, such as the existence of an earlier right or the descriptive or generic nature of the mark. It was held that the registration of a trade mark consisting of a surname cannot be refused in order to ensure that no advantage is offered to an applicant since Directive 89/104 contains no such provision, regardless of the particular category of the trade mark whose registration is sought.
It is argued therefore that Nicols indicates that in the context of Article 3(1)(b) of Directive 89/104 and of Article 7(1)(b) of Regulation No 40/94, an evaluation as to whether or not a trade mark constituted by a surname, even a common one, has a distinctive character, must be specifically undertaken in accordance with the criteria applicable to any mark covered by Article 2 of Directive 89/104, in relation, in the first instance, to the products or services regarding which registration is applied for and, in the second instance, to the perception of the relevant consumers.
In conclusion, on the strength of the above case law analysis and in particular Nicols v Registrar of Trade Marks, this commentator generally supports the sentiment expressed in the quote under review in this essay. As Nicols illustrates, the European Court is offering fairly straightforward guidance on the interpretation of the law in this field, and that guidance is both rooted in the secondary legislation and consonant with decisions in peripheral fields of justice. In its determination to embrace the consumer perspective as a prime consideration the Court of Justice has proved itself prepared to induce pragmatic law that retains market flexibility and for this it should be commended.
GLOBAL DOC. WORD COUNT : 1557 (excluding footnotes)
NB. I have allowed for the fact that I quote the preliminary reference in Nicols in full. As an extensive verbatim quote this should not be included in the word count. Consequently the paper comes in very close to the 1250 mark requested.
Trade Marks Directive 89/104/EEC
Council Regulation 40/94
Official Journal: OJ 1994 L 11, p. 1
UK Patent Office Intellectual Property Resources:
Cases as footnoted
 http://europa.eu.int/smartapi/cgi/sga_doc?smartapi!celexapi!prod!CELEXnumdoc&lg=EN&numdoc =31994R0040&model=guichett
 See also: OJ 1994 L 11, p. 1.
 It is submitted that the more common the surname, the less likely it is that registration will be successful without proof that that name has in fact become distinctive. Also taken into account is the number of goods and services, and the number of people with the same or a similar name, which might be affected by the registration. Fairly common surnames should probably be regarded as ‘devoid of any distinctive character’ until they have acquired a distinctive character through use.
  ECR I-5475, paras 59 & 63.
  ECR I-0000, para 50.
  ECR I-3161 para 42.
  ECR I-0000, para 21.
 Cited at note 7 supra.
  ECR I-0000, para 36.
 Cited at note 4 supra.
 See, inter alia, C-259/04 Continental Shelf: http://www.patent.gov.uk/about/ippd/ecj/2004/c25904.htm.
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