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2. The Bundespatentgericht wishes to know whether signs or indications which have become customary in the current 4. Merz & Krell disagreed with this deci­ language or in the trade practices of a sion and lodged a complaint with the particular sector may not be registered as Bundespatentgericht. Since, in its opinion, trade marks or whether, in fact, this bar to the decision it must take depends on the registration only affects such signs or interpretation of Article 3(l)(d) of the First indications insofar as they have become Directive, the national court has referred customary in relation to the specific goods the following question to the Court of or services they are intended to identify. In Justice of the European Communities: the event that the latter response is given, the Bundespatentgericht also wishes to know whether it is necessary for the signs or indications to describe directly the goods and services, or their essential characteris­ 'Is Article 3(l)(d) of First Council Directive tics and features. 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks to be interpreted 1 — Original language: Spanish. restrictively, contrary to the wording 2 — OJ 1989 L 40, p. 1. thereof, as meaning that only signs or

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International law (1) The principle of national treatment, laid down in Article 2, whereby the nationals of any country of the Union are entitled to receive in all the other 5. The Paris Convention for the Protection countries of the Union the same treat- of Industrial Property ('the Convention' or ment as these countries grant their own 'the Paris Convention') of 20 March 1883, nationals. to which all the Member States are signa- tories, 3was, and still, is the basic tool for 4 — Notable in the area of trade marks arc the two Madrid Agreements, one concerning the repression of false or deceptive indications of source on goods and the other 3 — Germany has been a State party to the Convention since concerning the international registration of marks, both of 1 May 1903. The legal document itself has been revised on a which were adopted in 1891; the Trade Mark Law Treaty of number of occasions, most recently at Stockholm by an 1994; and the Nice Agreement of 1957 concerning the agreement dated 14 July 1967, to which Germany became a international classification of goods and services for the party on 19 September 1970. purposes of registration of marks.

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(2) The principle of Union treatment, also time of production, or have become laid down in Article 2, whereby, in customary in the current language or in addition to the rights derived from the the bona fide and established practices principle of national treatment, citizens of the trade of the country where of the Member States of the Union may protection is claimed; 5 enjoy the rights specially provided for by the Convention.

tion of industrial and commercial property. names, designs, letters, numerals, the shape Such prohibitions or restrictions shall not, of goods or of their packaging, provided however, constitute a means of arbitrary that such signs are capable of distinguishing discrimination or a disguised restriction on the goods or services of one undertaking trade between Member States.' from those of other undertakings.'

2. The First Directive 12. Article 3 of the First Directive lists the situations in which a trade mark registra- tion may be refused or, where appropriate, declared invalid:

10. The aim of the First Directive is to approximate the laws of the Member States relating to trade marks, with a view to the establishment and functioning of the inter- nal market. This approximation is only '1. The following shall not be registered or partial and is limited to national provisions if registered shall be liable to be declared of law which most directly affect the invalid: functioning of the internal market. Its scope is limited to trade marks acquired by registration, 7leaving Member States free to fix the provisions of procedure concern- ing the registration, revocation and inva- lidity of trade marks so acquired. 8 (a) signs which cannot constitute a trade mark;

11. Article 2 of the First Directive pre- scribes the signs of which a trade mark may consist: (b) trade marks which are devoid of any distinctive character;

'A trade mark may consist of any sign capable of being represented graphically, particularly words, including personal (c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, 7 — First, third and fourth recitals in the preamhle and Article 1. quality, quantity, intended purpose, 8 — Fifth recital in the preamhle. value, geographical origin, or the time

4. ...' 10 — OJ 1994 L 11, p. 1. 11 — First recital in the preamble to the Regulation. 12 — Third recital in the preamble. 9 — Emphasis added. 13 — Fifth recital in the preamble.

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15. Under Article 4: 17. The German version of this provision of the Regulation is different:

'A Community trade mark may consist of any signs capable of being represented « graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertak- ings.' (d) trade marks which consist exclusively of signs or indications to designate the goods or services which have become customary in the current language or in the bona fide and established practices of the trade. 15 16. Article 7 provides that registration should be refused in the case of:

... ...

22. The question concerning interpretation 3. those which consist exclusively of signs referred to the Court of Justice by the or indications which have become Bundespatentgericht is very precise. 19 customary in the current language or However, the legal framework which must in the bona fide and established prac- be looked at for the purposes of answering tices of the trade to designate the goods the question is less clear. or services;17

5

A. The structure of Community trade mark IV — Procedure before the Court of Jus- law tice

20. The German and United Kingdom Governments and the Commission submit- ted written observations in these proceed- 23. There is no denying the importance to ings within the period prescribed for that the establishment of a single market of purpose by Article 20 of the EC Statute of adequate regulation of industrial property, the Court of Justice. 18 — See the consolidated text at OJ 1999 C 65, p. 1 and the amendments agreed by the Court of Justice on 16 May 16 — BGBl. 1994 I, p. 3082. 2000 at OJ 2000 L 122, p. 43. 17 — Emphasis added. 19 — See point 2 above.

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25. In effect, Community law had to inter- vene in the regulation of trade marks from two angles which, despite their differences, had a shared aim and were, therefore, complementary. First, there was the need to approximate, albeit partially, the laws of 24. As far as trade marks are concerned, the Member States relating to trade marks the Community legislature made clear their through the harmonisation of those areas importance in the preambles to the First which most directly affect the internal Directive and to the Regulation, from market, while allowing the Member States which it can be seen that while trade mark to retain freedom in all other areas. This rights could be a barrier to the establish- was the achievement of the First Direc- ment of a single market they could also, if tive. 25 properly regulated, be a useful tool for the future expansion of that market. The First Directive states that the disparities between the trade marks of the Member States may impede the free movement of goods and the

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open for the ownership of trade marks 29. The above is not, nor is it intended to which enjoy uniform protection and which be, a mere theoretical digression but rather take effect throughout the whole territory a statement of fact from which can be of the Community. 26 drawn a conclusion that will be important when it comes to answering the question referred to the Court by the Bundespatent- gericht: the provisions of the First Direc- tive, in particular Article 3(1)(d), must be interpreted in such a way as to integrate them with the whole body of Community trade mark law. 29 27. There are two dimensions to Commu- nity trade mark rights, resulting from the dual intervention referred to above and achieved by means of various legislative instruments which, despite their different legal effects, 27 have a single aim and a shared goal: the establishment and func- tioning of the internal market.

B. The function of trade mark rights

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product from products which have another including provisions governing the rights of origin'. 31 advantage conferred on trade mark owners by virtue of their position as such and provisions prescribing the grounds on which registration of a trade mark may be refused or declared invalid, as the case may be. Looking at it the other way around, and 31. In order to achieve such protection, the in the Court's own words, 'in order to trade mark owner is granted an assortment determine the exact scope of this right of rights and powers which are intended to exclusively conferred on the owner of the reserve for him the exclusive right to use trade mark, regard must be had to the the distinctive sign and to protect the trade essential function of the trade mark'. 34 mark against competitors who wish to take advantage of its status and reputation. This is what has become known in the case-law of the Court as 'the specific object of a trade mark'. 32

34. Regard must therefore be had to two interpretation criteria when responding to the question referred in the present pro- ceedings: the teleologicai criterion, which 32. This immediate aim (to place the trade centres on the function of the trade mark, mark owner in a precise legal position) is a and the integration criterion which seeks to means to achieving the ultimate objective provide an integrated interpretation of the (to guarantee a real system of competition relevant rule, as I have discussed at where there is no risk of confusion between point 29 above. goods of different origins). 33

1. The need for an association between the distinctive sign and the goods or services it identifies 36. This discrepancy is easily reconciled. The German version cannot be considered in isolation but should be looked at in the light of the versions in all the other languages,37 having regard at all times to the legal framework created by the First 38. The function of a trade mark is to Directive and the Paris Convention. As the distinguish. This function may seem Commission states in its written observa- obvious but it needs to be reiterated in tions, the German wording of Arti- order not to lose sight of it. Article 2 of the cle 7(1)(d) of the Regulation is not relevant First Directive expresses the function of a to the interpretation of Article 3(1)(d) of trade mark in clear, unequivocal terms, the First Directive. providing that a sign may constitute a trade mark provided that it is '... capable of distinguishing the goods or services of one undertaking from those of other undertak- ings'. 38 Therefore, any sign which lacks the capacity to distinguish cannot be a trade mark. 39 This deficiency may be inherent or acquired; in the latter case, it may arise 37. Therefore, the body of legislation re- ferred to precludes the registration of trade 38 — The wording of Article 4 of the Regulation is the same. 39 — The Agreement on Trade-Related Aspects of Intellectual Property Rights of 22 December 1994 (OJ 1994 L 336, p. 214) addressed these requirements. Article 15(1) states: 35 — The only difference is that the Paris Convention refers to 'Any sign, or any combination of signs, capable of the bona fide and established practices of the trade 'of the distinguishing the goods or services of one undertaking country where protection is claimed'. This discrepancy is from those of other undertakings, shall be capable of irrelevant, since it is clear that the state of being customary constituting a trademark. Such signs, in particular words refers to the geographical area in which the protection is to including personal names, letters, numerals, figurative be granted. elements and combinations of colours as well as any combination of such signs, shall be eligible for registration 36 — See paragraph 17. as trademarks. Where signs are not inherently capable of 37 — See Case 19/67 Van der Vecht [1967] ECR 345, especially distinguishing the relevant goods or services, Members pp. 353 and 354, and Case 29/69 Stauder [1969] ECR 419, may make registrability depend on distinctiveness acquired especially paragraphs 3 and 4. through use....'

39. Leaving aside subparagraph (a) which, read in conjunction with Article 2, pre- cludes registration of any sign which is not capable of being represented graphically, the meaning of the following three subpar- agraphs is clear. First there is a statement 41. What is meant by distinctive character? precluding signs which are devoid of any How does one determine whether a sign or distinctive character (subparagraph (b)), indication is capable of distinguishing followed by two specific examples of goods or services? The notion of 'distinctive indications which are not capable of dis- character' is an imprecise legal concept tinguishing goods or services, that is, those which should be clarified in the light of the which are descriptive (subparagraph (c)) circumstances and of the particular nature and those which are customary (subpara- of each individual case. 42 graph (d)). The remaining grounds for

42— Take, for example, the word ('Bravo') at issue in the proceedings which have given rise to the current question; 40 — These terms are not used i n the First Directive but do this word's capacity to distinguish would not be the same appear m the Regulation (Articles 7 and S respectively). were it used to distinguish the services of an undertaking 41 — See Article 5 of the Directive and Article 9 or the organising bullfights as it would be were it used to identify Regulation. a range of perfumes and eaux de Cologne.

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43. The instrumental nature of the rights derived from ownership of a trade mark demonstrate that they should only extend 45. Consequently, for the purposes of as far as is strictly necessary for the establishing whether a name or a graphic essential function to be fulfilled. It is also representation has the capacity to distin- clear that there is no need to grant the guish required of a trade mark, the goods proprietor of a particular sign an exclusive right of use with respect to all third parties but merely with respect to other signs 44 — This criterion is found in the First Directive — and in the Regulation — and is provided for in both the preamble which could lead to confusion, meaning (see the 10th recital) and in the enacting terms. In setting that regard must be had not just to the out the relative grounds for refusal of registration and of the right of use this confers on a trade mark owner, the disputed names or indications but also to First Directive has regard to two parameters, namely, the identity or similarity of the trade marks and the identity or the goods that they are intended to identify. similarity of the goods or services for which registration is applied (Articles 4 and 5). This test has been applied by the It is possible for two similar trade marks to Court in previous cases. In Case C-342/97 Lloyd Schuh- co-exist which protect different goods or fabrik Meyer [1999] ECR I-3819, the Court noted that: '... a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the marks, and vice versa' (paragraph 19 of the judgment). 43 — HAG GF, cited in footnote 22, paragraph 13 of the 45 — See SABEL, cited in footnote 29, paragraph 23 of the judgment. judgment.

46. Having made these points, it is impor- tant to note that Article 3(1)(d) of the First Directive requires that, for registration of a trade mark to be refused, or, where appro- priate, for an existing registration to be declared invalid, the signs or indications of which it consists must have become cus- tomary in the current language or in the bona fide and established practices of the trade relevant to the goods or services 48. In English, 'to describe' means 'to set which the mark is intended to identify. 46 forth in words by reference to character- istics'. 47 By describing something, one seeks to define it not by its essential predicates but by providing a general idea of its parts or properties. 48 The basis for excluding as distinctive signs all indications or names which, by virtue of the fact that they describe the goods or services in 2. The strength of the association between question, lack the capacity to distinguish the goods or services and the signs or is provided for by Article 3(1)(c) of the indications which have become customary First Directive, pursuant to which registra- tion may be refused (or declared invalid if it has already been effected) for trade marks consisting exclusively of signs or indica- tions which may serve in trade to designate the kind, quality, quantity, intended pur- pose or other characteristics of the goods or of the rendering of the service. 47. The previous point does not resolve, however, all the elements of the question which the Bundespatentgericht has referred 47 — The Shorter Oxford English Dictionary, Oxford Univer- to the Court of Justice. It is still necessary sity Press, 1973. In Spanish, 'describir' means 'delinear, dibujar, figurar una cosa, representándola de modo que dé to specify whether the said signs or indica- cabal idea de ella' [Diccionario de la Lengua Española, tions must have become customary to 2 1 s tEdition, Real Academia Española, 1992). In French, 'décrire' means 'représenter dans son ensemble' (Le Petit describe directly the goods or services, or Robert, Dictionnaire de ta Langue Française, Diction- naires Le Robert, 1993). In Italian, 'descrivere' means their essential characteristics and proper- 'rappresentare con parole, in modo più o meno particolar- eggiato o caratterizzante' (Dizionario della Lingua Itali- ties, whether it will suffice that there is a ana, 2 1 s tEdition, Le Monnier — Firenze, 1997). Finally, in German, 'beschreiben' means 'ausführlich, im Einzelnen mit Worten wiedergeben, schildern, darstellen, erklaren' (Deutsches Universal Wörterbuch, Dudenverlag, 1996). 46 — One therefore arrives, by interpretation, at the wording of 48 — Third definition of 'describir' in the Diccionario de la tile German version of Article 7(1)(d) of the Regulation. Lengua Española.

50. In conclusion, Article 3(1)(d) of the First Directive does not require that the signs or indications referred to therein should directly describe the specific goods or services in respect of which registration is sought, or their essential characteristics or features. It merely requires them to be customary in the current language or in the practices of the trade relevant to the goods or services which they are intended to 52. Therefore, all signs and indications identify, without specifying the degree of which, by virtue of having become custom- association that must exist between them. ary in the current language or in the practices of the trade relevant to specific goods or services, evoke these goods or services for the average consumer 5 0and bring them into his perception, thereby causing him to remember them, lack the capacity to differentiate. This is what the Commission, in its written observations, refers to as 'connotation'. The sign auto- matically — subconsciously even — 51. Once again the answer is provided by becomes associated with the goods or reference to the essential function of a trade services it identifies. 51 mark, that is to guarantee the origin of goods or services by distinguishing them, without any possibility of confusion, from 50 — See SABEL, cited in footnote 28, paragraph 23 of the other goods or services, resulting in the judgment. prohibition of any name or indication 51 — Following this line of reasoning, there would in principle be no bar to registration of the word 'Bravo', which, in the which lacks the capacity to distinguish. majority of the languages of the Member States (German, This is the case of, inter alia, free signs, Danish, Spanish, French, English, Italian, Dutch, Portu- guese) is an expression of enthusiasm, for typewriters. generic names and, in general, all graphic However, there could be impediments to registering it for sports clothing or services (sport being an area where the exclamation is habitually used), for instance, or, as I have already noted in footnote 41, for bullfighting, since the adjective 'bravo' refers to one of the essential character- 49 — The distinction between signs and indications which have istics of a fighting bull. In fact, the Office for Harmonisa- become customary and those which are descriptive also tion in the Internal Market has permitted registration of appears in the Regulation (Article 7(1)(c) and (d)) and in BRAVO as a Community trade mark for diesel engines, the Convention (Article 6 quinquies (B)(2), second and which are goods belonging to class 7 (Application number third alternatives). 000463919, date of registration: 7 September 1999).