C-265/00
ECLI:EU:C:2002:67
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CAMPINA MELKUNIE
OPINION OF ADVOCATE GENERAL RUIZ-JARABO COLOMER delivered on 31 January 2002 1
1. This question seeking a preliminary vided for in Article 6a(3) of the Eenvormige ruling (the first to be referred by the Beneluxwet op de Merken (Uniform Bene- Benelux Court of Justice) concerns the lux Trade Marks Law — 'the UBU). Cam- assessment of distinctive character in pina contested the reasons set out by the relation to composite word marks. The BTMO in that document; however, the same question, from a similar perspective, BTMO informed Campina, by letter of is among the matters dealt with in Case 7 March 1997, that the registration applied C-363/99 Koninklijke KPN Nederland v for had been refused. Campina thereupon Benelux-Merkenbureau, which concerns a referred the matter, within the prescribed reference for a preliminary ruling from the period, to the Gerechtshof te 's-Gravenhage Gerechtshof te 's-Gravenhage, (Regional appealing against the refusal under Court of Appeal, The Hague). Article 6b of the UBL. The appeal was dismissed.
4. 'Bio' is a prefix which is frequently used Facts to indicate a certain degree of authenticity in foodstuffs, whilst 'mild' means 'mild' in Dutch. 'Biomild' is a new word in the sense that it did not exist in Dutch before the 2. On 18 March 1996 Campina applied to application for registration. Synonyms exist the Benelux-Merkenbureau (Benelux Trade for both BIO and MILD, which can also Marks Office — 'the BTMO') for regis- reasonably be used if it is intended to make tration of the term BIOMILD in respect of clear to the public that the product in goods in Classes 29, 30 and 32 (food and question possesses the combination of char- beverages). acteristics which those terms describe.
3. By letter of 3 September 1996, the 5. Campina has, since September 1996, BTMO sent Campina the notification pro- made extensive use of the mark BIOMILD and has carried out large-scale advertising of the product which it offers under that 1 — Original language: Spanish. mark, with the result that, even when the
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B T M O decided to refuse registration the proceedings and to refer the following (7 March 1997), it could be assumed that questions to the Court of Justice of the the s i g n ' s d i s t i n c t i v e c h a r a c t e r h a d European Communities for a preliminary increased appreciably or had at least come ruling: into being as a result of the sign's general use.
6. The Hoge Raad, to which the case was referred on appeal, referred nine questions ' 1 . Must Articles 2 and 3(1) of the Direc- to the Benelux Court of Justice for a tive be construed as meaning that, in preliminary ruling. determining whether a sign consisting of a new word composed of a number of elements has sufficient distinctive character to be capable of serving as a mark for the goods in question, it must be assumed that that question is in principle to be answered in the affirm- 7. The Benelux Court of Justice took the ative even if each of those elements is view that, in order to reply to three of those itself devoid of any distinctive char- questions, an interpretation of Articles 2 acter for those goods, and that the and 3(1) of the First Council Directive position will be different only if there 89/104/EEC of 21 December 1988 to are other circumstances, for instance if approximate the laws of the Member States the new word constitutes an indication, relating to trade marks (OJ 1989 L 40, p. 1) which is obvious and directly compre- ('the Directive') was necessary, given that hensible for any person, of a commer- the term 'all distinctive character' cor- cially essential combination of prop- responds to the term 'any distinctive char- erties which cannot be indicated other- acter' used in the Directive (and the cor- wise than through use of the new responding term in the Paris Convention). word?
The questions referred for a preliminary ruling 2. If Question 1 is answered in the negative: must it then be assumed that a sign consisting of a new w o r d composed of various elements, each of which is itself devoid of any distinctive 8. By judgment of 20 June 2000, the character for the goods in question Benelux Court of Justice decided to stay within the meaning of Article 3(1) of
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CAMPINA MELKUNIE
the Directive, is itself also devoid of Analysis of the questions referred any distinctive character, and that the situation may be different only if there are other circumstances which result in the combination of the component parts being greater than the sum of 9. As I have already pointed out, the those parts, for instance where the new questions referred by the Benelux Court word indicates a certain creativity? of Justice are identical to those put by the Gerechtshof te 's-Gravenhage in Case C-363/99 Koninklijke KPN Nederland v Benelux-Merkenbureau relating to regis- tration of the sign 'Postkantoor'. 3. Does it make any difference for the answer to Question 2 whether syn- onyms exist for each of the component parts of the sign, with the result that competitors of the applicant for regis- tration who wish to make it clear to the public that their products too contain 10. For that reason, I shall refer to my the combination of properties indicated Opinion of today's date in that case and, in by the new word can reasonably also particular, to paragraphs 35 to 48 and 65 do so by using those synonyms?' to 76.
Conclusion
11. I suggest that the Court of Justice replies to the Benelux Court of Justice as follows:
(1) In determining whether a sign is capable of serving as a mark, the competent authority must, under First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks,
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take into account not only the sign as it was filed, but also any relevant circumstances, including the possibility that distinctive character has been acquired through use or the risk of mistake or confusion from the point of view of the average consumer, and do so always in relation to the goods or services designated by the sign.
(2) Where a trade mark is composed of words, whether it is descriptive must be determined not only by reference to each of the terms considered individually but also by reference to the whole which they form. Any perceptible difference between the meaning conveyed by the combination of words for which registration is sought and the terms used in everyday language by the relevant group of consumers to designate the product or the service or their essential characteristics is apt to confer distinctive character on that combination of words. For those purposes, a difference may be regarded as perceptible where it concerns significant elements of the form or meaning of the sign.
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