C-108/97

OPINION OF MR COSMAS — JOINED CASES C-108/97 AND C-109/97

OPINION OF ADVOCATE GENERAL COSMAS delivered on 5 May 1998 *

I — Introduction on the other. The proceedings have arisen as a result of the defendants' use of the mark 'Chiemsee', which is registered in the name of the plaintiff, to distinguish their products.

1. By the questions it has referred to the Court for a preliminary ruling, the First Com- mercial Chamber of the Landgericht München II — Directive 89/104 I (Regional Court, Munich I) seeks guidance on the interpretation of Article 3(1 )(c), the first sentence of Article 3(3) and Article 6(l)(b) of the First Council Directive of 21 December 1988 to approximate the laws of the Member States relating to trade marks (89/104/EEC) 1 (hereinafter 'the Directive').

3. Article 2 of the Directive states:

2. The questions have been raised in proceed- ings between Windsurfing Chiemsee Produktions- und Vertriebs G m b H (WSC), the plaintiff in the main proceedings (herein- after 'the plaintiff'), on the one hand and, in Case C-108/97, Boots- und Segelzubehör 'A trade mark may consist of any sign capable Walter Huber (hereinafter 'the first defen- of being represented graphically, particularly dant') and, in Case C-109/97, Franz Atten- words, including personal names, designs, let- berger (hereinafter 'the second defendant'), ters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one * Original language: Greek. undertaking from those of other undertak- 1 — OJ 1989 L 40, p. 1. ings.'

OPINION OF MR COSMAS — JOINED CASES C-108/97 AND C-109/97

parties not having his consent from using in 6. Furthermore, Article 6, which relates to the course of trade: the limitation of the effects of the trade mark, provides:

'1. The trade mark shall not entitle the pro- (a) any sign which is identical with the trade prietor to prohibit a third party from using, mark in relation to goods or services in the course of trade, which are identical with those for which the trade mark is registered;

(b) indications concerning the kind, quality, (b) any sign where, because of its identity quantity, intended purpose, value, geo- with, or similarity to, the trade mark and graphical origin, the time of production the identity or similarity of the goods or of goods or of rendering of the service, or services covered by the trade mark and other characteristics of goods or services; the sign, there exists a likelihood of con- fusion on the part of the public, which includes the likelihood of association between the sign and the trade mark.

provided he uses them in accordance with honest practices in industrial or commercial matters.'

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8. None the less, even signs which were devoid of distinctive character within the meaning of that provision were protected under Paragraph 4(3) of the WZG if they had 12. Under Paragraph 8(3) of the Markeng- gained 'trade acceptance'. esetz, a trade mark which is precluded from being protected because it falls within Para- graph 8(2) 3 may still be registrable 'if the mark, before the time of the decision on reg- istration, as a result of its use for the goods ... in respect of which registration has been applied for, has gained acceptance in the trade circles concerned'. 9. Furthermore, the WZG recognised, in Para- graph 25 ('Ausstattungsschutz' — 'protection of get-up'), the possibility of acquiring rights 2 — Under Article 16(1) of the Directive, Member States were to in a trade mark not by registration but by use transpose its provisions into national law not later than 28 December 1991. However, in adopting Decision 92/10/EEC of the mark and the effect of such use on the (OJ 1992 L 6, p. 35) on 19 December 1991, the Council exer- trade. According to the order for reference, cised its power under Article 16(2) of the Directive to extend the deadline for transposing it into national law to 31 December Paragraph 25 uses the term 'trade reputation' 1992. ('Verkehrsgeltung') to describe what is 3 — An example given by the court making the reference is that of a mark which consists exclusively of an indication which required. could serve to designate the geographical origin of goods.

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15. The Chiemsee is the largest lake in Bavaria, with an area of 80 km 2 . It is a tourist attrac- tion. Surfing is one of the activities carried on there. The surrounding area, called the Chi- 14. Under German case-law, the concept of emgau, is primarily agricultural. 'trade acceptance' ('Verkehrsdurchsetzung') is wider and more comprehensive than that of 'trade reputation' ('Verkehrsgeltung'). Thus, the fact that a mark has been granted registra- tion because it has gained trade acceptance necessarily means that it has acquired some kind of trade reputation — but the opposite is not necessarily true. In order to determine whether trade reputation or trade acceptance exists, a distinction must be drawn between those verbal and morphological aspects of a mark which are intrinsically distinctive and those which are not (such as descriptive names, particularly those designating geographical origin). The former in general justify the reg- 16. The plaintiff is based in Grabenstätt near istration and protection of the mark whereas the Chiemsee. It sells sports clothes and shoes the latter must gain acceptance through use in as well as other sports fashion products, the relevant trade circles. The level of trade designed by a sister company which is also acceptance or trade reputation varies from based near the Chiemsee, and manufactured approximately 16% to 70%. The main method in a different region. The plaintiff has been for establishing the level of acceptance or using the name of the lake to designate its reputation is by survey. However, both products since 1990. Between 1992 and 1995, German case-law and legal authors are reluc- moreover, the plaintiff also registered the name tant to accept the recognition and protection as a trade mark in respect of its products as of signs which need to be 'left free', that is to part of various graphic designs, in some cases say, if I have understood correctly, they resist with pictures (in particular a picture of a the notion that one business should have a sportsperson diving, if I have interpreted it monopoly on signs which other businesses correctly) and additional wording such as have an equal interest in using. 'Chiemsee Jeans', 'Windsurfing — Chiemsee

D. 2043643 31.08.1993

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OPINION OF MR COSMAS — JOINED CASES C-108/97 AND C-109/97

E. 2043644 31.08.1993

F. 2086304 30.11.1994

G. 2901054 31.01.1995

(b)

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(c)

20. In the main proceedings, the plaintiff chal- '1. Questions relating to Article 3(l)(c) lenged the use of the name 'Chiemsee' by the defendants, claiming that, notwithstanding the differences in graphic representation, there was a risk of confusion with the name used by it since 1990 which it has registered as a trade mark and which is known in the trade.

Is Article 3(l)(c) to be understood as meaning that it suffices if there is a pos- 21. The defendants, on the other hand, con- sibility of the designation being used to tend that the term 'Chiemsee' is not capable indicate the geographical origin, or must of protection because it is an indication of that possibility be likely in a particular geographical origin which must remain avail- case (in the sense that other such under- able to everybody, and that accordingly its takings already use that word to desig- use in a different graphic form cannot create nate the geographical origin of their goods any risk of confusion. of similar type, or at least that there are specific reasons to believe that that may be expected in the foreseeable future), or must there even be a need to use that designation to indicate the geographical origin of the goods in question, or must there in addition also be a qualified need for the use of that indication of origin, 22. That being so, the national court con- for instance because goods of that kind, siders it necessary to refer the following ques- produced in that region, enjoy a special tions to the Court: reputation?

23. By the first and third limbs of the first question referred, which must be considered together, the national court is essentially asking In particular are the requirements the whether, and in what circumstances, a geo- same in all cases, or are the requirements graphical name can constitute a trade mark

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OPINION OF MR COSMAS — JOINED CASES C-108/97 AND C-109/97

and, if it can, the extent to which such a trade establish a link between them and a particular mark is protected vis-à-vis third parties. undertaking (guarantee of origin).

24. In order to answer that question, it is first of all necessary to recall the objective of the Directive and the rationale for according a trade mark protection. As the Court has pointed out on more than one occasion, 'the essential function of the trade mark ... is to guarantee to the consumer or end user the identity of the trade-marked product's origin by enabling him to distin- 25. As the first and third recitals make clear, guish it without any risk of confusion from the Directive is intended to achieve an initial products of different origin'. 4 level of harmonisation of the differing trade mark laws of the Member States, as the dis- parities which exist may impede the free movement of goods and the freedom to pro- vide services and may distort competition within the common market.

28. In my view, it is in the light of precisely that function of trade marks that Article 3(1) 26. To that end, the Directive, most impor- of the Directive makes lack of distinctive tantly, lays down common rules for the reg- character an independent ground for refusal istration of trade marks and, where appro- or invalidity of a mark (paragraph (b)) but priate, for establishing their invalidity a also provides for a more specific ground for posteriori and sets out the scope and limita- invalidity or refusal in respect of marks which tions of the protection conferred by a trade consist exclusively of descriptive indications mark, leaving it to Member States to deter- (paragraph (c)) or which have become cus- mine the details, particularly those relating to tomary in the current language or in the trade procedure. (paragraph (d)).

describe more particular or more specific or paragraphs (c) or (d) of Article 3(1) fall within simply more typical instances of lack of dis- paragraph (b). 6 tinctive character in a mark which explain and clarify the general concept of lack of dis- tinctive character but do not introduce new or fundamentally different ideas. 5 The same conclusion follows if Article 3(1) is inter- preted alongside Article 3(3), under which a trade mark is not to be refused registration or 30. I now turn to Article 3(l)(c). It is clear declared invalid under paragraphs (b), (c) or from the wording itself of this provision that (d) of Article 3(1) if it has subsequently three conditions must be fulfilled for a trade acquired a distinctive character by reason of mark comprising a geographical indication to the use which has been made of it. In other fall within its scope. First, the trade mark words, in the circumstances set out in those must consist exclusively of a geographical paragraphs, which are dealt with together in indication; secondly, the indication must serve Article 3(3), the trade mark subsequently in trade to designate geographical origin; acquires the quality which it initially lacked and thirdly, the geographical origin must constitute a characteristic of the goods. More and the absence of which prevented it from specifically: being registered or enabled it to be struck off the register — namely distinctive character. Accordingly, it may be assumed that those cases which are not specifically mentioned in

(a) Exclusivity

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above and those belonging to the second word 'Chiemsee', the word of which they defendant which appear at (c) above do not consist. to my mind fall within the contested provi- sion. 7

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WSC v BOOTS- UND SEGELZUBEHÖR WALTER HUBER AND ATTENBERGER

simple marks which are either identical or or have changed over the centuries (such as similar to one another (such as the marks 'Byzantium', 'Dacia', 'Lutetia', 'Babylon' and appearing at F and (a) above), with the result so on). that they give the impression of being vari- ants of the same mark.

Furthermore, where it is illogical or improb- If the opposite view were taken, the result able that a geographical name indicates the would be a limitless proliferation of trade geographical origin of the goods in question, marks consisting of the same word, since the it cannot fall within Article 3(1 )(c). The number of ways in which a word can be example usually given here is that of the graphically represented is infinite. However, 'Mont Blanc' trade mark for pens (because that would create utter confusion in the market nobody could logically suppose a pen to and lead to an increase in conflicts between originate from the mountain in question), marks, which cannot have been the intention 'Pôle N o r d ' ('North Pole') for bananas of the Community legislature. 8 (because bananas cannot be grown in the pre- vailing climate at that latitude) and so on.

35. Next, it should be noted that Article 3(l)(c) does not exclude all geographical terms without exception. Similarly, geographical terms which are com- pletely unknown cannot fall within the provi- sion, that is, terms referring to places unknown to the general public whether within or out- side the Member State in which the question Clearly, therefore, imaginary, mythical or figur- of protection of the trade mark arises, because ative geographical names (such as 'Thule', the public is in any event not in a position to 'Utopia', ' N o Man's Land', 'Atlantis', and so connect the goods in question with the places on) do not fall within Article 3(1 )(c) since designated by the geographical indications they cannot designate any geographical origin. concerned.

38. The terms 'indications of origin' and 'des­ ignations of origin' had a precise meaning in Community law well before they were defined by the Community legislature in Council Regulation (EEC) N o 2081/92 1 0 at least in the sector of agricultural products and food­ 37. It follows from the foregoing that Article stuffs. 3(1 )(c) does not prevent the use of all geo­ graphical terms in general, but only of some of them. In my view, it prevents the use of those geographical terms which, at the time when the mark was applied for, were not yet consolidated and could constitute 'indications of origin' or 'designations of origin' within the specific meaning of those legal terms under Community law at the time when the Direc­ 39. The Court has, in its case-law, stated what tive was adopted. is meant by these terms, particularly when interpreting Article 36 of the EC Treaty. In the cases concerned, the question which arose was whether restrictions on the free move­ ment of goods imposed by national law could be justified on grounds of the protection of rights which constitute the specific subject- matter of industrial and commercial property, and in particular 'indications of origin' and Indeed, if the Community legislature had 'designations of origin'. intended to exclude indications which simply designate geographical origin, it would have referred to signs which designate such origin, 10 — Regulation of 14 July 1992 on the protection of geographical because that is the primary function of geo­ indications and designations of ongin for agricultural prod­ graphical indications both in the current lan­ ucts and foodstuffs (OJ 1992 L 208, p. 1). Other Community texts also contain provisions relating to guage and in trade. The fact that the Direc­ ļeographical indications and designations of origin, particu- tive uses the circumlocution 'which may serve, f arly in the wine sector, such as Article 2(3)(s) of Commis­ sion Directive 70/50/EEC of 22 December 1969 based on in trade, to designate ...' in my view denotes the provisions of Article 33(7), on the abolition of which measures have an effect equivalent to quantitative restric­ tions on imports and are not covered by other provisions adopted in pursuance of the EEC Treaty (OJ, English Spe­ cial Edition 1970 (I), p. 17) and Article 6(5) of Council Regulation (EEC) N o 2333/92 of 13 July 1992 laying down 9 — In the sense that there is no causal link between the 'designa­ general rules for the description and presentation of spar­ tor' and the 'designee' (see Saussure, F., Cours de linguistique kling wines and aerated sparkling wines (OJ 1992 L 231, générale, éd. T. de Mauro, Payot, Paris, 1987, p. 100). p. 9).

40. Thus, in its judgment in Commission v must confer on it a specific quality and spe- Germany, 1 1the Court held that: 'Whatever cific characteristics of such a nature as to dis- the factors which may distinguish them, the tinguish it from all other products' (point 7). registered designations of origin and indirect indications of origin referred to in that direc- tive always describe at the least a product coming from a specific geographical area. 41. Furthermore, in its judgment in Franti, 12 which was clarified by its judgment in Expor- tur, 13 the Court acknowledged that a bottle containing a product could constitute an 'indi- rect designation of geographical origin' (the case related to the 'Bocksbeutel' used by wine To the extent to which these appellations are growers in Franconia and Baden for the pre- protected by law they must satisfy the objec- sentation of their wines). It is clear from that tives of such protection, in particular the need judgment that such an indication may be pro- to ensure not only that the interests of the tected if it has been used for a long period of producers concerned are safeguarded against time by producers from a specific region in unfair competition, but also that consumers order to distinguish their products, but that are protected against information which may Articles 30 and 36 of the EC Treaty prohibit mislead them. national legislation allowing only certain domestic producers to use such bottles if similar bottles are also traditionally used by producers in other Member States, and have been for a long period of time, to market their wines. These appellations only fulfil their specific purpose if the product which they describe does in fact possess qualities and characteris- tics which are due to the fact that it origi- nated in a specific geographical area. 42. In Exportur, to which I have just referred, the question arose whether French companies had the right to produce and sell in France confectionery for which they were using the names 'Alicante' and 'Jijona' (names of Spanish towns), which a Spanish company had been using for a long period of time to describe As regards indications of origin in particular, similar products manufactured by it. 14In the the geographical area of origin of a product judgment given in that case, the Court drew the following distinction between the concept

By contrast, 'A designation of origin (appel- lation d'origine; denominación de origén), for its part, guarantees, not only the geographical (a) "designation of origin": means the name provenance of the product, but also that the of a region, a specific place or, in excep- goods have been manufactured according to tional cases, a country, used to describe quality requirements or manufacturing stan- an agricultural product or a foodstuff: dards prescribed by an act of public authority and thus that they have certain specific char- acteristics' (ibid.).

— originating in that region, specific place or country, and

43. It is in the public interest for Community law to protect designations or indications of origin. Thus, a wine producer cannot be authorised to use, in descriptions relating to the method of production of his products, geographical indications which do not correspond to the actual provenance of the — the quality or characteristics of which wine. 15 are essentially or exclusively due to a particular geographical environment

15 — Case C-306/93 SMW Winzersekt [1994] ECR I -5555, para- graph 25. 16 — See point 38 above.

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WSC v BOOTS- U N D SEGELZUBEHÖR WALTER HUBER A N D ATTENBERGER

18 — In these cases, the geographical term acquires a secondary metaphorical meaning in addition to its initial literal meaning. 17 — I do not believe it necessary to emphasise that, although Sometimes the secondary meaning supersedes or replaces the those definitions are valid 'for the purposes of this regula- first meaning, as in the case of the name 'Baccarat' which is tion', they arc of general value and use. discussed below.

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By contrast, if the geographical indication is 48. In that respect, it should first of all be already well known because it is associated noted that the Court has consistently held with certain goods, that is to say if a direct that 'when applying national law, whether and necessary connection has already been adopted before or after the directive, the national court which has to interpret that law created between the geographical indication must do so, as far as possible, in the light of and those goods, a single company may not the wording and the purpose of the directive arrogate to itself the exclusive right to turn it so as to achieve the result which the directive into a trade mark. It is sufficient for those has in view'. 20 That is particularly so in this purposes if, at the time of filing an applica- case because the Directive expressly excludes tion for the trade mark for which recognition the parallel application of national provisions is sought (or in some cases, at the time when of law to trade marks (sixth recital). a decision as to recognition is made), the con- ditions of fact to which protection of a geo- graphical indication or of an indication or designation of origin is subject should be sat- 19 — I say 'geographical indication' for the sake of brevity and because this case relates to a geographical indication. How- isfied (manufacture in the relevant place of ever, the same considerations apply in respect of a 'sign' goods possessing certain characteristics), irres- which, according to the wording of Article 3(l)(c), may serve to designate geographical origin. In such cases, the sign pective of whether the indication concerned constitutes an indirect indication of geographical origin, like the 'Bocksbeutel' bottles referred to above (point 41). is already legally registered. Indeed, according 20 — Case C-152/95 Phytheron International [1997] ECR I-1729, to the strict wording of the provision in ques- paragraph 18.

An example illustrating the second tendency is the case of the term 'York' in which, in 1982, the House of Lords ultimately refused registration of a trade mark in respect of 51. First of all, the only type of 'availability' trailers containing the word 'York', on the recognised in the Directive is the requirement ground inter alia that a geographical name is that the sign or indication in respect of which prima facie incapable of registration, and application is made for registration as a trade upheld the argument put forward by the mark should be available in the sense that no administrative authority that 'it seems entirely other undertaking has appropriated it to dis- reasonable to conclude that at some future tinguish identical or similar products at the date, if not now, trailers or semi-trailers ... material time, which is in principle the date of may be made there [that is, in York]'. 22 application for registration of the trade mark (Article 4). For these purposes, it is the fac- tual circumstances actually pertaining at the 21 — On this point, sec Gevers, F., 'Geographical Names and Signs used as Trade Marks' in European Intellectual Property Review, 1990, vol. 12, p. 285, and Bonnet, G.: 'La marque constituée par un nom géographique en droit français' in 23 — BGH, 14.1.1963 (GRUR, 1963, p. 469). See, on this point, Semaine juridique, 1990, II, p. 782. Rothschild, A., 'Les limites à la protection du nom 22 — [1982] FSR 111; see also F. Gevers cited at footnote 21 géographique en tant que marque', mémoire de DESS, Stras- above, p. 287. bourg, 1985, pp. 38 and 39.

52. The same applies by analogy to cases such as this, where the proprietor of an earlier geographical trade mark applies for protec- tion from a later mark. The new mark can only prevail if the earlier mark is invalid at the time when the objection filed by the pro- prietor of the earlier mark is dealt with (for instance, because it was void ab initio and has 54. If, on the other hand, 'availability' is failed to gain acceptance in commercial trans- understood to mean that the geographical actions, or because, though valid initially, it term must remain available to any interested subsequently became a generic term as a result party for any legitimate use other than as a of the inaction of the proprietor). 24 trade mark, the matter is fully covered by Article 6(1 )(b) of the Directive as I will explain below. 25 If that is the case, however, it limits 24 — One example is the name 'sherry', an anglicisatíon of the the effects of an existing right to a trade mark. Spanish geographical term 'Jerez' which initially designated a wine originating in that part of Spain. However, as a result In other words, the need for the geographical of the producers' inaction, the term was widely used by term to remain available to competitors for other producers and became generic (see, on this point, the Opinion of Advocate General Warner in Case 12/74, cited any use other than use as a trade mark does at footnote 11 above, p. 208). That was not the case with the names of the products 'cham- not by any means constitute a ground for pagne' and 'cognac', manufactured in the regions of the same name in France. It may be noted that German wine growers denying the proprietor the right to the trade were barred from using those terms as long ago as 1919 mark. under Articles 274 and 275 of the Treaty of Versailles. That protection has been reinforced by Community legislation (see, for example, Article 6 of Council Regulation (EEC) N o 3309/85 of 18 November 1985 (OJ 1985 L 320, p. 9), and now Article 6(5) of Council Regulation (EEC) N o 2333/92 of 13 July 1992 (OJ 1992 L 231, p. 9), which prohibit pro- ducers of sparkling wines not entitled to use the designation 'champagne' from even referring to it indirectly, for example, by using the term 'méthode champenoise' (see, on this point, the judgment in Winzersekt, cited at footnote 15 above)). 25 — See point 60 et seq. below.

(c) Characteristic a holiday destination. Tourism and agricul- ture are practised in the surrounding area which, it should be remembered, is known as the Chiemgau, but the region is not known for the manufacture of textiles or clothing, or 55. The interpretation suggested above is con- indeed sports clothing. Furthermore, at the sistent with the third requirement of Article time when the plaintiff's trade marks were 3(1 )(c), whereby the geographical origin must registered, there were no other undertakings amount to a 'characteristic' of the goods. In in the area using the trade mark legally for my view, that term refers not simply to a similar products. 26 property which is common to such goods, but to a specific feature which characterises and distinguishes them.

tation. That is because, as I have explained, any grounds for refusal in this case other than goods connected with those features share in those mentioned in Article 3(1). The plain- the renown, the reputation or simply the tiff's choice of the geographical term 'Chiem- quality associated with the place, the method see' must therefore be considered to be of manufacture or the name of the manufac- turer. 26 — The first defendant states in its written submissions that there arc other undertakings in the lake region which use the name 'Chiemsee' to distinguish the clothes they produce. However, these facts do not appear in the order for refer- ence and cannot therefore be validly relied on (see Phytheron International, cited at footnote 20 above, paragraphs 11 to

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sufficiently original and 'arbitrary' in the sense question presupposes that the indications in described above and thus to comply with question do fall within Article 3(1 )(c). 28 Article 2. Therefore, even those of the plain- tiff's trade marks which consist exclusively of the name are protected and confer exclusive rights of use on the plaintiff. In particular, they confer on the plaintiff the right to pre- vent the use of the defendants' trade marks at (a), (b) and (c) above, since those marks are either identical with or similar to the plain- 60. By the second limb of the first question tiff's earlier marks and, in addition, are used referred, the national court is asking whether in relation to identical or similar goods, with account must be taken of Article 6(1 )(b) of the result that there clearly exists a likelihood the Directive when interpreting Article 3(1 )(c). of confusion on the part of the public who might assume that all the goods covered by those trade marks originate from the same undertaking.

61. That question must be answered in the negative.

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WSC v BOOTS- U N D SEGELZUBEHÖR WALTER HUBER A N D ATTENBERGER

63. The national court may be seeking guid- Baccarat is a village in Lorraine which was ance as to the limitations on protection of a hardly known until several decades ago when mark validly consisting of a geographical indi- a crystal glassworks was set up there which cation vis-à-vis third parties who have an used the name of the village as a trade mark interest in using it in the context of their for its goods. The goods acquired a world- commercial transactions. wide reputation with the result that, in the mind of the general public, the term 'Bac- carat' designated the goods in question and not the village. Other crystal glassworks were set up in and around the village, one of which 64. If so, it should be noted that third par- had its registered office at Baccarat and used ties do not in any event have the right to use that name in its correspondence. The French the indication as it is, on its own, as a trade courts rightly held that protecting the propri- mark because to do so would infringe the etor's trade mark could not extend to pre- proprietor's exclusive rights. However, third venting the second company from making parties are entitled to use indirect indications legitimate use of the term concerned in the (for example, circumlocutions or images), 29 manner described. 31 designating the same geographical origin or, if necessary, the geographical indication itself as an address in documentation or information other than the trade mark in relation to their products or their commercial activities in gen- eral, provided that they use it in accordance with honest practices in the relevant field of economic activity. Thus they are entitled to use the geographical indication as a geo- B — Second question graphical term (that is to say in its primary and literal meaning) in commercial correspon- dence, press advertisements, labelling of the product and so on. 30

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66. As the background to these proceedings of them are capable of registration under the shows, in this case there is a conflict between Directive because they fulfil, albeit by dif- the defendants' new marks in respect of which ferent means, the essential function of a trade they seek recognition and the previously reg- mark which is to identify an undertaking's istered marks of the plaintiff. goods and to distinguish them from similar goods made by other undertakings.

69. Both marks which in themselves have distinctive character and those which subse- 71. In my view, use should, firstly, have con- quently acquire it by reason of the use made tinued for a reasonable length of time, to be

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left to the discretion of the national courts. to the circumstances. However, since Article That would enable the soundness of the mark 3(3) operates as a derogation, it calls for a to be tested and prevent a proliferation of strict interpretation. Since the problem relates marks which are used occasionally or peri- more to the number and extent of the mark's odically and have no serious prospect of target audience than to an assessment of the enduring. In addition, it gives those with a mark's value, quality and substance in gen- legitimate interest sufficient time to raise any eral, serious consideration must also be given objections to or challenge the registration of to quantitative criteria. In that respect, a per- the trade mark. centage of at least 50% is, to my mind, a rea- sonable threshold below which the mark cannot be said to be established in the market place.

So far as the particular percentages to which 74. The specific types of evidence which may the national court refers are concerned, the be adduced as proof that a mark is distinctive question must in principle be left to the dis- are, on the whole, laid down by the proce- cretion of the national court which will take dural provisions on evidence in force in the whichever decision is appropriate according Member States, and it is for the national courts to assess the types of evidence con- cerned. 34 However, the autonomy of national 32 — For example, a company which sells similar products may have an interest in the mark not being registered so that it can take advantage of some of its rival's customers until that rival puts its products back on the market under another trade mark. It is also likely that a company which is partially 33 — Obviously, that does not mean that the belief must have affected by the new trade mark may still be in favour of its taken hold solely through purchases of the product. being registered because that will do comparatively greater 34 — See Case C-9/93 IHT Internationale Heiztechnik and Dan- damage to a larger competitor. zinger [1994] ECR I-2789, paragraphs 18 to 20.

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OPINION OF MR COSMAS — JOINED CASES C-108/97 AND C-109/97

legal systems in matters of procedure is not or refute all facts of which they have know- unlimited where evidence is adduced to prove ledge. It is for the national court to assess the that a factual condition upon which the appli- merits of the evidence adduced and, where cation of a Community rule depends is satis- appropriate, to accord greater weight to par- fied. Therefore, it must be accepted that cer- ticular evidence. tain general rules at least can be deduced from the overall scheme of the Directive.

76. Furthermore, it must be acknowledged Furthermore, both the representative sample that, whilst there may be several types of evi- of the population to whom questions are put dence which are in principle sufficient, it is and the questions themselves must satisfy the not permissible to limit them from the outset criteria set out above. If they do not, the either in practice or, a fortiori, by statutory survey may not be relied on either in whole provisions. Therefore, the propensity apparent or in part. from the decisions of the German courts to rely wholly or principally on surveys, cannot be considered to be compatible with the Directive. In conclusion, the parties must have 35 — Cases 29/63, 31/63, 36/63, 39/63 to 47/63, 50/63 and 51/63 Usines de la Providence [1965] ECR 911, and Case 37/83 the option of adducing evidence to support Rewe-Zentral [1984] ECR 1229.

I - 2808

WSC v BOOTS- UND SEGELZUBEHÖR WALTER HUBER AND ATTENBERGER

VI — Conclusion

78. O n the basis of the foregoing considerations, I propose that the Court should answer the questions referred for a preliminary ruling as follows:

(1) A mark which is composed exclusively of a geographical term is not contrary to Article 3(l)(c) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks if the term is imaginary or unknown to the general public or if there is no direct and necessary link, between the goods designated by the mark and the geographical region to which the term refers, resulting essentially from the fact that that region is or may be known because similar goods which are valued by con- sumers for their distinctiveness or quality are already manufactured there.