C-363/99

OPINION OF M R RUIZ-JARABO — CASE C-363/99

OPINION OF ADVOCATE GENERAL RUIZ-JARABO COLOMER delivered on 31 January 2002 1

1. By order of 3 June 1999, the Gerechtshof 3. On 16 June 1997, the Merkenbureau te 's-Gravenhage (Regional Court of informed KPN that it was provisionally Appeal, The Hague, Netherlands) referred refusing registration because the sign to the Court of Justice 10 questions 2 applied for did not have distinctive char- concerning the interpretation of Articles 2 acter, since it merely described the goods and 3 of First Council Directive and services it was intended to identify. 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks ('the Trade Mark Directive'). 3

4. KPN raised objections to the provisional refusal of the application and requested either that the refusal be withdrawn or that 1. The facts and the main proceedings consultations be initiated with a view to disclaiming the protection afforded by the mark for the products and services which the sign described. The Merkenbureau saw no reason to review its decision and, by 2. On 2 April 1997, Koninklijke KPN letter of 28 January 1998, it notified KPN Nederland NV ('KPN') lodged with the that its decision to refuse the application Benelux Trade Marks Office (the Benelux- was now final. Merkenbureau, 'Merkenbureau') an appli- cation for registration of 'Postkantoor' as a word sign for paper, card and products manufactured therefrom, 4 and a wide variety of services. 5 In Dutch, 'postkan- toor' means 'post office'.

1 — Original language: Spanish. 2 — By the same order, the Gerechtshof refers a further 15 5. KPN brought an action forthwith before questions to the Benelux Court of Justice. the Gerechtshof, seeking an order requiring 3 — OJ 1989 L 40, p. 1. 4 — Class 16 under the Nice Agreement of 15 June 1957 the Merkenbureau to register the sign in concerning the international classification of goods and respect of all the classes applied for or, at services for the purposes of registration of marks, as revised and amended. any rate, in respect of such classes as the 5 — Included in classes 35, 36, 37, 38, 39, 41 and 42. court might determine in its judgment.

6 — Uniform Benelux Law on trade marks of 19 March 1962, as amended (Nederlands Traktatenblad 1962, No 58, pp. 11-39, and 1983, N o 187, pp. 2-10). 7 — The Uniform Benelux Law on trade marks.

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of the application to which Article 6b or regional languages of the Benelux of the Uniform Law refers? area automatically extends to its trans- lation in the other Benelux languages?

4.(a) In light of the provisions of Article 6d(B)(2) of the Paris Con- vention, do the marks which under Article 3(1)(c) of the Trade Mark Directive are not to be registered 5.(a) In the assessment of the question or, if registered, may be declared whether a sign consisting of a invalid, also include marks consist- (new) word made up of com- ing of signs or indications which ponents, which in themselves have may serve in commerce to indicate n o distinctive c h a r a c t e r w i t h the kind, quality, quantity, desig- regard to the goods or services for nation, value, place of origin or which the application is made, date of manufacture of the goods answers the description given in or provision of the service or other Article 2 of the Trade Mark Direc- characteristics of the goods or ser- tive (and Article 1 of the Uniform vices, even if that configuration is Law) of a mark, must a (new) not the (only or most) usual name word of that kind in principle be used? Does it make any difference taken to have a distinctive char- in that connection whether there acter? are many or only a few competi- tors who may have an interest in using such indications (see the judgment of the Benelux Court of Justice of 19 January 1981, NJ 1981, 294, in P Ferrero & Co S.p.A. v Alfred Ritter Schokolade- fabrik GmbH (Kinder))? (b) If not, must a word of that kind (leaving aside the fact that it may have become part of everyday language) in principle be taken to have no distinctive character, and may that be otherwise only under Is it also relevant that under Article 13C a t t e n d a n t circumstances which of the Uniform Law the right to a trade result in the combination being mark expressed in one of the national more than the sum of its parts?

If not, in order to determine whether such a descriptive sign has descriptive It is assumed that in invalidity proceed- character for those goods or services, ings, which may be initiated after

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registration of a sign, there is no III. The legal framework requirement that the sign be "evidently inadmissible."

1. The international protection of trade marks

8.(a) Is it consistent with the scheme of the Trade Mark Directive and the Paris Convention for a sign to be 8. Trade marks, like other forms of indus- registered for specific goods or trial property, have long enjoyed extensive services, subject to the limitation international protection, which was initi- that the registration applies only to ated by the Paris Convention for the those goods and services in so far Protection of Industrial Property ('the Paris as they do not possess certain Convention') of 20 March 1883, 8to which characteristics (for example, regis- all the Member States are signatories. 9 tration of the sign "Postkantoor" for the services: direct-mail cam- paigns and the issue of franking seals "provided they are not con- nected with a post office")?

11. Article 6 quinquies (C)(1) of the Con- vention provides that: 'In determining whether a mark is eligible for protection, 'Trade marks covered by this Article may all the factual circumstances must be taken be neither denied registration nor invali- into consideration, particularly the length dated except in the following cases: of time the mark has been in use.'

2. Trade marks in Community law

A. The Treaty establishing the European Community 2. when they are devoid of any distinctive character, or consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, 12. Article 30 EC provides: place of origin, of the goods, or the time of production, or have become

10 — See the Opinion of 18 January 2001 in Case C-517/99 Merz & Krell [2001] ECR I-6959, and in particular point 6 'The provisions of Articles 28 EC and 29 thereof. Article 2(1) of the Agreement on Trade-Related Aspects of Intellectual Property Rights, annexed to the EC shall not preclude prohibitions or Agreement establishing the World Trade Organisation, done at Marrakesh on 15 April 1994 (OJ 1994 L 336, restrictions on imports, exports or goods pp. 214 to 223), provides that, in respect of, inter alia, trade marks, Member States shall comply with Articles 1 in transit justified on grounds of... the to 12, and Article 19, of the Paris Convention. protection of industrial and commercial

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(c) trade marks which consist exclusively 16. Article 5 governs the rights of the of signs or indications which may proprietors of trade marks in the following serve, in trade, to designate the kind, manner: quality, quantity, intended purpose, value, geographical origin, or the time of production of the goods or of rendering of the service, or other char- acteristics of the goods; ' 1 . The registered trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade:

(d) trade marks which consist exclusively of signs or indications which have become customary in the current lan- guage or in the bona fide and estab- lished practices of the trade; (a) any sign which is identical with the trade mark in relation to goods or services which are identical with those for which the trade mark is registered;

18. On 20 December 1993, the Council adopted Regulation (EC) N o 40/94 on the C o m m u n i t y t r a d e m a r k ('the Regu- lation'), 1 2 in order, as I pointed out in the Opinion referred to above, that the internal market could enjoy conditions similar to those in a national market and, in par- ticular, conditions which, from a legal perspective, '... enable undertakings to 17. Article 6 limits the rights conferred by adapt their activities to the scale of the ownership of a trade mark, stipulating that: Community, whether in manufacturing and distributing goods or in providing ser- vices...'. 13 The aim was to create 'trade marks... which are governed by a uniform Community law directly applicable in all Member States.' 1 4 This aim is to be ' 1 . The trade mark shall not entitle the pursued but does not purport to replace proprietor to prohibit a third party from the laws of the Member States on trade using, in the course of trade, marks. 1 5

19. The R e g u l a t i o n a d o p t s the same approach as and uses identical wording to the Trade Mark Directive, in that it lists the signs of which a Community trade mark may consist (Article 4) and then goes on to (b) i n d i c a t i o n s c o n c e r n i n g the k i n d , set out the grounds for refusal of regis- quality, quantity, intended purpose, tration (Articles 7 and 8). Like the Direc- value, geographical origin, the time of tive, it stipulates the rights conferred by a production of goods or of rendering of Community trade mark (Article 9) and the the service, or other characteristics of limitations of the effects of such a trade goods or services; mark (Article 12).

24. In accordance with Article 1 of the Uniform Benelux Law:

22. With a view to transposing the Trade Mark Directive into Benelux law, and to supplementing it with the relevant provi-

'The following may be registered as indi- 16 — Nederlands Traktatenblad 1962, N o 58, pp. 1 to 9. vidual marks: names, designs, imprints, 17 — See Article 10. Established by a treaty dated 31 March stamps, letters, numerals, the shape of 1965 and inaugurated on 1 January 1974, the judicial role fulfilled by the Benelux Court of Justice is the same as that goods or their packaging, and any other which is assigned to the Court of Justice of the European signs which serve to distinguish the goods Communities at a Community level; namely, the inter- pretation of provisions of uniform Benelux law by means of an undertaking. of replies to questions referred for preliminary rulings by the three Member States. Advocate General Jacobs remarked on this similarity of roles in the Opinion he delivered on 29 April 1997 in Case C-337/95 Parfums Christian Dior [1997] ECR I-6013, paragraphs 13 and 26. 18 — Nederlands Traktatenblad 1993, N o 12, pp. 1 to 12.

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However, shapes which result from the shall afford the applicant the possibility of nature of the goods themselves, or which replying within such period as may be laid affect the substantial value of the goods, or down in the implementing regulations. which give rise to a technical result may not be registered as trade marks.'

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doubts concerning the application of Com- lation on this type of industrial property. munity trade m a r k provisions. There The three Member States of that economic appears to be a significant distortion within association unified their respective trade the system, since it is difficult to believe mark laws, but, in addition, they harmon- that the work of the European Union ised those same laws with the laws of the legislature could be so lacking in this area, other Member States of the European or that those who are responsible for its Union by adapting the Uniform Law to implementation should fail to understand the Trade Mark Directive, and naturally their role. Regardless of the reason, the they did so in compliance with their com- Court of Justice is required to supplement mitments under the Paris Convention. and facilitate the work of others within the interpretative role conferred on it under Article 234 EC.

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which must be considered in the light of the 35. First of all (Questions IV(a), V and VI), latter objective. The rights of advantage the Gerechtshof wishes to know, in detail, which ownership of a trade mark confers if the assessment of whether a sign is on its owner exist so that consumers will be capable of constituting a trade mark must able to distinguish the marked product or be carried out in the abstract or, alter- service from products or services of dif- natively, by reference to the specific cir- ferent origins. As such, they may also be cumstances of each case. In that regard, the subject to restrictions, including restrictions Gerechtshof points out that, prior to lodg- deriving from the fact that it is in the public ing its application, the applicant had interest to ensure that certain names remain already used the sign on a large scale as a as widely available as possible ('the require- trade mark for the products in question, ment of availability'). and that it appeared on inquiry that, vis- à-vis the goods and services which it was intended to identify, the sign would not be liable to mislead the public.

KONINKLIJKE KPN NEDERLAND

to 'the absolute grounds for refusal... as goods or services in question, but also to laid down in Article 3(1) in conjunction whether it is capable of being represented with Article 2 of... [the] Directive...'. graphically. Where, as in the main proceed- Although it is correct that, under the ings, the sign in question is a word, it is Community law scheme, the first circum- difficult to imagine that that would not be stance mentioned by the national court is the case. 24 This is the only assessment required to be assessed in the context of the which may be somewhat abstract in nature. absolute grounds for refusal, the second circumstance — which relates to the like- lihood of error or confusion — must be assessed in the context of the relative grounds listed in Article 4. Since — and I must reiterate this — the Trade M a r k Directive is neutral in relation to the Member States' procedural options, there 40. The authority is then required to estab- is nothing to preclude a national legal lish whether the sign meets the conditions system from stipulating that both matters laid down in Article 3(1)(b), (c) and (d), must be assessed simultaneously. The namely that it must distinguish the goods or Court's reply cannot disregard that fact. services in question, and that it must not be descriptive of or generic to those goods or services. Each condition is independent of the others and requires a separate assess- ment, although, in practice, the same sign may frequently fail to meet more than one condition. 2 5 It is also necessary to assess 38. On that basis, it can be concluded that whether a sign, despite being devoid of any an assessment of the conditions which must distinctive character for the purposes of be met in order for a sign to be eligible for Article 3(1)(b), (c) and (d), has acquired protection by registration as a trade mark such character through use, as laid down in m u s t — e s s e n t i a l l y — be specific in Article 3(3). nature, in the sense that a variety of factual circumstances must be taken into consider- ation, as quite clearly follows from the absolute rule laid down in Article 6 quin- quies (C)(1) of the Paris Convention. 2 3

result of which it is necessary to consider nate, and in relation to which protection is whether a sign is 'capable of distinguishing' sought. 2 6 or has a potentially distinctive character (Article 2), whether it has a definite dis- tinctive character (Article 3(1)(b)), or whether it has a distinctive character as a category (Article 3(3)), thereby adding to the a l r e a d y c o n s i d e r a b l e difficulties involved in conceptual delimitation. The limitation of protection to one or a few categories of goods or services, together with the limitation created by the territorial area in which the trade mark will take effect, mean that the assessment of dis- tinctive character should be conducted The competent authority must also ensure from the point of view of the average that the sign in respect of which regis- consumer of the same types of goods or tration is sought is not liable to deceive the services in the territory in respect of which public as to the nature, quality or geo- registration is applied for, 2 7 such a con- graphical origin of the product or service sumer being presumed to be 'reasonably (Article 3(1)(g)), and that it is not likely to well-informed and reasonably observant cause confusion with other, earlier trade and circumspect'. 2 8 marks (Article 4(1)(b)).

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perceive in the sign a meaning such as to account of the sign's descriptive character, enable it to qualify under Article 3(1)(b), the public does not perceive the sign as (c) and (d). 3 0 being capable of distinguishing all, or any of, the relevant goods or services (Question XI).

44. As I indicated above, each of the con- 42. In short, it is appropriate to reply to the ditions stipulated in Article 3(1)(b), (c) and referring c o u r t t h a t , w h e n assessing (d) of the Trade Mark Directive requires a whether a sign is eligible for registration separate assessment. Accordingly, the fact as a trade mark, the competent authority that a sign is not descriptive does not must have regard not only to the sign as per necessarily mean that it has distinctive the application for registration but to all character, either in a broad sense (in other the other relevant circumstances, including words, as a category of sign which meets all the possibility that the sign has acquired the conditions of Article 3(1)(b), (c) and distinctive character through use, and the (d)) or, still less, in a strict sense (ex likelihood of error or confusion perceived Article 3(1)(b)). Moreover, as I have also from the point of view of an average pointed out, signs are distinctive, descrip- consumer, bearing in mind at all times the tive or generic only by reference to the goods or services identified by the sign. goods or services being identified. Descrip¬ tiveness, like the other attributes in ques- tion, is a purely relative quality and, there- fore, under the Trade Mark Directive the scenario to which the Gerechtshof refers in the alternative cannot arise.

I can find nothing in the wording of the Trade Mark Directive to preclude national There is, however, no hierarchical relation- authorities from administering their regis- ship between the Court of Justice and the tration system on the basis of such dis- national courts, nor between the national claimers which, in any event, by merely courts themselves. Nor is there any require- specifying the goods or services to which ment that those courts must reach the same protection applies, do not affect the pri- conclusions, save that they apply the same mary purpose of enabling consumers to principles of interpretation. Therefore, the identify the undertaking of origin. Nor is practices of one Member State are not my opinion changed by the Nice Agree- binding on the authorities of another ment, 3 1 whose classification system is, in Member State. Nevertheless, in the inter- any event, not mandatory. ests of prudence and mutual trust, the basis for which is the pursuit of the abovemen¬ tioned objective, those practices — and, in particular, the reasoning on which they are based — constitute a useful indication to which the competent authority may refer in its assessment of whether a sign has dis- tinctive character. 46. Finally, the Gerechtshof wishes to know whether the fact that a corresponding sign has been registered in another Member State for similar goods or services is material to the assessment of the sign (Question XVI).

4. Descriptive marks (Question IX(a))

48. Article 3(1)(c) o f t h e T r a d e M a r k 47. The Trade Mark Directive seeks to Directive prohibits marks which consist approximate the laws of the Member exclusively of signs which may serve, in States, without unifying them. National trade, to designate the kind, quality, quan¬ courts are therefore required to interpret

— The bearing which the number of 5 1 . Article 3(1)(c) precludes so-called competitors who may have an interest descriptive trade marks on the basis that in using the indications might have on that type of representation of signs and the assessment of whether the indi- products lacks the capacity to distinguish, cations are descriptive in character, in the reason being that where the kind, addition to the relevance to that assess- quality, quantity or other characteristics ment of the fact that, under domestic l a w , the right to a t r a d e m a r k expressed in one of the national or 33 — Judgment of the Benelux Court of Justice of 19 January regional languages of the Benelux area 1981 in Case A 80/3 Ferrero v Ritter, Jurisprudence Cour de Justice Benelux, 1980-1981, vol. 2, p. 69. automatically extends to its translation 34 — Judgment of the Benelux Court of Justice of 5 October in the other Benelux languages. 1982 in Case A 81/4 Wrigley v Benzon, Jurisprudence Cour de Justice Benelux, 1980-1982, vol. 3, p. 20. 35 — Pursuant to that case-law, in order to determine whether a sign is descriptive the following must be taken into consideration: (a) whether the words of which the mark is composed are the only ones which are appropriate to designate the product or, alternatively, whether there are synonyms which could be used; (b) whether, from a commercial perspective, the words designate an essential 50. According to the parties, the Gerecht- attribute of the product or merely an incidental char- acteristic; (c) the nature of the product and the definition shof seeks guidance in relation to descrip- of the target consumer; and (d) the level of repute which tive marks because it is uncertain as to the mark enjoys. Signs which, while not classed as descriptive, are evocative of the product or service in whether the case-law of the Benelux Court question may be registered as trade marks.

52. As the Commission rightly points out 55. As regards indications of geographical in its observations, the question posed by origin, the Court held that it is in the public the referring court relates to the question interest that they remain available, because whether the so-called 'requirement of avail- they may be an indication of the char- ability' principle of German law (Freihalte- acteristics of the goods concerned, and may bedürfnis) applies within the context of the also give rise to a favourable response. 3 7 As Trade Mark Directive. According to that a result of that proviso, which relates to proposition, in addition to the impediments 'indications which may serve to designate associated with a lack of distinctive char- the geographical origin', the competent acter, there are also other public-interest authority is required to assess whether a considerations which militate in favour of geographical name, in respect of which limiting the registration of certain signs so application for registration as a trade mark that they may be used freely by all oper- is made, designates a place which is cur- ators. rently associated in the mind of the relevant class of persons with the category of goods concerned (as with geographical locations which are already well-known for those goods), or whether it is reasonable to assume that such an association may be established in the future. 3 8 53. The Court of Justice explained the extent to which those considerations apply 36 — Windsurfing Chiemsee, paragraph 25. to the Trade Mark Directive in Windsur- 37 — Ibid., paragraph 26. fing Chiemsee, cited above. 38 — Ibid., paragraphs 29 to 31.

56. The same reasoning applies, mutatis Therefore, at paragraph 37 of Baby-dry, mutandis, to all categories of descriptive the Court held that the purpose of pro- sign. 3 9 hibiting registration of purely descriptive signs or indications as trade marks is to prevent protection being afforded to signs or indications which, because they are no different from the usual way of designating the relevant goods or services, or their characteristics, are not able to fulfil the function of identifying the undertaking that markets them and are thus devoid of the distinctive character needed for that func- 57. The Court of Justice thus held that tion. underlying Article 3(1)(c) there is a require- ment that any assessment is guided by the fact that it is in the public interest to keep certain signs available but that it is not necessary for that requirement of availabil- ity to be real, current or serious as had been held under German case-law. Such an assessment is not, however, possible in relation to Article 3(3) of the Trade Mark Directive, since this Article does not permit any differentiation as regards distinctive- ness by reference to the perceived import- ance of keeping the geographical name available for use by other undertakings. 40 59. That recent judgment thus fails to refer to the public interest there is in availability. It is the case that in Baby-dry, unlike in Windsurfing Chiemsee, the issue was not specifically debated, 41 but it is also the case that the appellant raised the issue at that time, claiming that the reasoning of the Court of First Instance amounted to an 58. I must also point out that, while the acceptance that Community law does Baby-dry judgment does not expressly recognise, to some extent, the requirement contradict that case-law, it does not restate of availability and that the Court of Justice it either. Although Baby-dry concerned the avoided the issue and delivered a judgment interpretation of the Community trade in general terms. There is, therefore, some mark Regulation, as opposed to the Trade uncertainty as to whether the proposition Mark Directive, the two pieces of legis- applies to Community trade mark law, lation are intended to be applied uniformly. which it is for the Court to dispel by either approving or overruling expressis verbis its earlier case-law. 39 — This can be inferred from the wording of paragraph 26 of the judgment in Windsurfing Chiemsee ('more particu- larly'), and from the general wording of paragraph 35. 40 — Judgment in Windsurfing Chiemsee, paragraphs 35 and 41 — The contested judgment of the Court of First Instance does 48. not contain an assessment based on those considerations.

For those reasons, in the absence of a specific statement by the Court, it is my view that the rule in Windsurfing Chiemsee still applies, and that Community trade mark law does, to a certain extent, recog- nise the requirement of availability. To my mind, that reasoning is fallacious. First, monopolies are always relative, whether to a product, to a territory, or to a moment in time. A trade mark does not monopolise a term but specifically the use of that term as a trade mark, and, fur- thermore, it does not impose any limitation as to time. Second, a trade mark creates a privilege which enables an operator to 62. The Gerechtshof also enquires whether register a sign in order to designate its the fact that, under domestic law, the right goods or services. That privilege becomes to a trade mark expressed in one of the all the more excessive when it concerns national or regional languages of the Bene- lux area automatically extends to its trans¬

42 — The fact that, according to Procter & Gamble, this could amount to an 'outdated view of trade marks' (Baby-dry, 43 — Signs which have a highly distinctive character. See Case paragraph 30) does not affect my opinion. C-39/97 Canon [1998] ECR I-5507, paragraph 18.

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lation in the other Benelux languages has 65. It is first of all appropriate to note that any bearing on the assessment of whether a combination of components, each of the indications are descriptive in character. which is devoid of distinctive character, can have distinctive character, provided that it amounts to more than just a mere sum of its parts.

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descriptive in themselves, were juxtaposed Third, the judgment contains an assessment in an unusual manner, with the result that of factual matters, such as the perception of it was not a familiar expression in the the descriptiveness of a word combination English language, either for designating the by likely consumers, which is not within products in question or for describing their the jurisdiction of an appeal court and essential characteristics. Accordingly, the which the Court was not equipped to word combination was capable of bestow- perform, since no expert evidence on the ing distinctive power and could not be subject had been submitted. 46 refused registration. 4 5

69. Nor do I agree with the test which was 68. That judgment gives rise to a number proposed in order to determine whether a of difficulties. word combination made up of descriptive components has distinctive character. The Court held that 'any perceptible difference' between the terms usually used to designate the product, or its essential characteristics, and the combination of words in question was sufficient for that purpose.

First of all — as I have already indi- cated — it casts doubt on the applicability of the precepts laid down barely two and a half years earlier in Windsurfing Chiemsee concerning recognition of the requirement of availability. If that, purely minimum, test is not tem- pered by the 'requirement of availability' approach, to which the judgment in ques- tion did not refer, I do not believe that it is

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capable of ensuring that trade marks are 'trade marks which consist exclusively of not essentially descriptive in nature. signs or indications which may serve... to designate...'. Although the two provisions have different purposes, the similarity of the wording indicates that a uniform approach to the two cases should be adopted.

70. However, what is at issue is a very recent decision, which was, moreover, adopted by the Court in plenary session, 72. On that occasion, I took the view that, for which reason it will probably be of no for the purposes of Article 3(1)(e), second avail to seek a reversal of precedent. Suffice indent, 'purely functional shape' is to be it therefore to propose that, for the pur- understood as any shape whose essential poses of Article 3(1)(c), a difference will be characteristics are attributable to the regarded as perceptible if it affects import- achievement of a technical result. I adjusted ant components of either the form of the my interpretation referring to 'essential sign or its meaning. As regards form, a characteristics' in order to clarify that a perceptible difference arises where, as a shape only c o n t a i n i n g one a r b i t r a r y result of the unusual or imaginative nature element which, from a functional point of of the word combination, the neologism view, is minor, such as its colour, does not itself is more important than the sum of the escape the prohibition. terms of which it is composed. As regards meaning, a difference will be perceptible provided that whatever is evoked by the composite sign is not identical to the sum of that which is suggested by the descriptive components. Nor does Article 3(1)(c) permit any dif- ference whatsoever to qualify, allowing instead only those which are relevant to the description.

74. A similar line of argument also applies 77. As I stated above, 4 8 if a particular to this case. The prohibition of descriptive territory has implemented a system of trade marks means that everyone is able freely to mark registration which covers several use signs which designate goods and ser- linguistic regions, it would be in keeping vices, or the essential characteristics with the aims of the Trade Mark Directive thereof. While it is true that Article 6(1) for an assessment of the distinctive char- of the Trade Mark Directive precludes the acter of a sign to be carried out in relation proprietor of a trade mark from preventing to each of the languages spoken. the use of such indications by third parties, it is also true that permitting the regis- tration of descriptive marks unfairly pre- cludes the use of such indications as trade marks by a section of operators, and maintains the advantage initially acquired over a resource that is very likely to be exhausted, such as, in relation to the goods they designate, descriptive terms with posi- 6. Peculiarities of Benelux law tive associations. I see no reason why Community law should tolerate such a risk of stagnation when operators could easily resort to solutions that are imaginative or original. 78. By Question XII(a), the national court seeks guidance concerning the significance to be attached to the appraisal policy which, under Benelux law, the Merken- bureau is obliged to follow, particularly in relation to the rules governing 'evidently 75. It follows from the above that con- inadmissible applications', and with regard siderations relating to the existence of to the common commentary of the govern- synonyms or the essential, or incidental, ments of the Benelux area concerning the nature of the descriptive element of a sign amendment of the Uniform Law on Trade are immaterial to the assessment of dis- Marks. 4 9 tinctive character.

(2) The fact that a sign is not descriptive does not necessarily mean that it has distinctive character. Signs are distinctive, descriptive or generic only by reference to the goods or services which they identify.

(3) The directive does not preclude a national system under which applicants may disclaim the protection afforded by a trade mark in respect of certain goods which either possess, or are devoid of, a particular characteristic.

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(4) Article 3(1)(c) of the directive does n o t merely prohibit the registration as trade marks of descriptive signs which are currently associated, in the relevant sectors, with the category of goods in question; instead, it also applies to signs which may, in all reasonable likelihood, be used in those sectors in the future.

(5) If a particular territory, to which the directive applies, has implemented a system of trade mark registration which covers several linguistic regions, it is in keeping with the aims of the directive for an assessment of the distinctive character of a sign to be carried out in relation to each of the languages spoken.