Summary
Parties
Grounds
Decision on costs
Operative part
Keywords

1 Approximation of laws - Trade marks - Directive 89/104 - Where registration of a trade mark may be refused or the trade mark declared invalid - Trade mark consisting exclusively of an indication of geographical origin - Meaning

(Council Directive 89/104, Art. 3(1)(c))

2 Approximation of laws - Trade marks - Directive 89/104 - Where registration of a trade mark may be refused or the trade mark declared invalid - Trade mark devoid of distinctive character - Exception - Distinctive character acquired by use - Meaning - Interpretation - Criteria

(Council Directive 89/104, Art. 3(3))

Summary

1 Article 3(1)(c) of First Directive 89/104 on trade marks is to be interpreted as meaning that:

- it does not prohibit the registration of geographical names as trade marks solely where the names designate places which are, in the mind of the relevant class of persons, currently associated with the category of goods in question; it also applies to geographical names which are liable to be used in future by the undertakings concerned as an indication of the geographical origin of that category of goods;

- where there is currently no association in the mind of the relevant class of persons between the geographical name and the category of goods in question, the competent authority must assess whether it is reasonable to assume that such a name is, in the mind of the relevant class of persons, capable of designating the geographical origin of that category of goods;

- in making that assessment, particular consideration should be given to the degree of familiarity amongst the relevant class of persons with the geographical name in question, with the characteristics of the place designated by that name, and with the category of goods concerned;

- it is not necessary for the goods to be manufactured in the geographical location in order for them to be associated with it.

2 The first sentence of Article 3(3) of the First Directive 89/104 on trade marks is to be interpreted as meaning that:

- a trade mark acquires distinctive character following the use which has been made of it where the mark has come to identify the product in respect of which registration is applied for as originating from a particular undertaking and thus to distinguish that product from goods of other undertakings;

- in the case of a trade mark embodying an indication of geographical origin, it precludes differentiation as regards distinctiveness by reference to the perceived importance of keeping the geographical name available for use by other undertakings;

- in determining whether a trade mark has acquired distinctive character following the use which has been made of it, the competent authority must make an overall assessment of the evidence that the mark has come to identify the product concerned as originating from a particular undertaking and thus to distinguish that product from goods of other undertakings; in that connection, in the case of a trade mark embodying an indication of geographical origin, regard must be had in particular to the specific nature of the geographical name in question;

- if the competent authority finds that a significant proportion of the relevant class of persons identify goods as originating from a particular undertaking because of the trade mark, it must hold the requirement for registering the mark to be satisfied;

- where the competent authority has particular difficulty in assessing the distinctive character of a mark in respect of which registration is applied for, Community law does not preclude it from having recourse, under the conditions laid down by its own national law, to an opinion poll as guidance for its judgment.

Parties

In Joined Cases C-108/97 and C-109/97,

REFERENCE to the Court under Article 177 of the EC Treaty (now Article 234 EC) by the Landgericht München I, Germany, for a preliminary ruling in the proceedings pending before that court between

Windsurfing Chiemsee Produktions- und Vertriebs GmbH (WSC)

and

Boots- und Segelzubehör Walter Huber (C-108/97), Franz Attenberger (C-109/97)

"on the interpretation of Articles 3(1)(c) and 3(3) of the First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1),

THE COURT,

composed of: G.C. Rodríguez Iglesias, President, P.J.G. Kapteyn, J.-P. Puissochet, G. Hirsch and P. Jann (Presidents of Chambers), G.F. Mancini, J.C. Moitinho de Almeida, C. Gulmann (Rapporteur) and D.A.O. Edward, Judges,

Advocate General: G. Cosmas,

Registrar: H.A. Rühl, Principal Administrator,

after considering the written observations submitted on behalf of:

- Windsurfing Chiemsee Produktions- und Vertriebs GmbH (WSC), by Stephan Gruber, Rechtsanwalt, Munich,

- Boots- und Segelzubehör Walter Huber, by Michael Nieder, Rechtsanwalt, Munich,

- Mr Attenberger, by Richard Schönwerth, Rechtsanwalt, Munich,

- the Italian Government, by Umberto Leanza, Head of the Legal Department of the Ministry of Foreign Affairs, acting as Agent, assisted by Oscar Fiumara, Avvocato dello Stato,

- the Commission of the European Communities, by Jan Berend Drijber, of its Legal Service, acting as Agent, assisted by Bertrand Wägenbaur, of the Brussels Bar,

having regard to the Report for the Hearing,

after hearing the oral observations of Windsurfing Chiemsee Produktions- und Vertriebs GmbH (WSC), Boots- und Segelzubehör Walter Huber, Mr Attenberger and the Commission at the hearing on 3 March 1998,

after hearing the Opinion of the Advocate General at the sitting on 5 May 1998,

gives the following

Judgment

Grounds

1 By two orders of 8 January 1997, received at the Court Registry on 14 March 1997, the Landgericht München I (Regional Court, Munich I) referred to the Court for a preliminary ruling under Article 177 of the EC Treaty (now Article 234 EC) a number of questions on the interpretation of Articles 3(1)(c) and 3(3) of the First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1, hereinafter `the Directive').

2 Those questions were raised in two sets of proceedings between Windsurfing Chiemsee Produktions- und Vertriebs GmbH (hereinafter `Windsurfing Chiemsee'), on the one hand, and Boots- und Segelzubehör Walter Huber (hereinafter `Huber') and Franz Attenberger, on the other, relating to the use by Huber and Mr Attenberger of the designation `Chiemsee' for the sale of sportswear.

Community law

3 Article 2 of the Directive, entitled `Signs of which a trade mark may consist', provides:

`A trade mark may consist of any sign 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 undertakings.'

4 Article 3 of the Directive, entitled `Grounds for refusal or invalidity', provides

`1. The following shall not be registered or if registered shall be liable to be declared invalid:

(a) signs which cannot constitute a trade mark;

(b) trade marks which are devoid of any distinctive character;

(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service;

(d) trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade;

...

(g) trade marks which are of such a nature as to deceive the public, for instance as to the nature, quality or geographical origin of the goods or service;

...

3. A trade mark shall not be refused registration or be declared invalid in accordance with paragraph 1 (b), (c) or (d) if, before the date of application for registration and following the use which has been made of it, it has acquired a distinctive character. Any Member State may in addition provide that this provision shall also apply where the distinctive character was acquired after the date of application for registration or after the date of registration'.

5 Article 6 of the Directive, entitled `Limitation of the effects of a trade mark', provides:

`1. The trade mark shall not entitle the proprietor to prohibit a third party from using, in the course of trade,

...

(b) indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of the service, or other characteristics of goods or services;

...

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

6 Article 15(2) of the Directive provides, under the heading `Special provisions in respect of collective marks, guarantee marks and certification marks':

`By way of derogation from Article 3(1)(c), Member States may provide that signs or indications which may serve, in trade, to designate the geographical origin of the goods or services may constitute collective, guarantee or certification marks. Such a mark does not entitle the proprietor to prohibit a third party from using in the course of trade such signs or indications, provided he uses them in accordance with honest practices in industrial or commercial matters; in particular, such a mark may not be invoked against a third party who is entitled to use a geographical name'.

National law

7 The Markengesetz (Law on Trade Marks), which has been applicable since 1 January 1995, transposed the Directive into German law. Under Section 8(2)(2) of the Markengesetz, trade marks `which consist exclusively of ... indications which may serve in trade to designate the ... geographical origin ... or other characteristics of the goods' are to be refused registration.

8 Pursuant to Section 8(3) of the Markengesetz, Section 8(2)(2) does not apply `if the mark, before the time of the decision on registration, as a result of its use for the goods ... in respect of which registration has been applied for, has gained acceptance among the relevant class of persons'.

The main proceedings and the questions referred

9 The Chiemsee is the largest lake in Bavaria, with an area of 80 km2. It is a tourist destination and surfing is one of the activities carried on there. The surrounding area, called the `Chiemgau', is primarily agricultural.

10 Windsurfing Chiemsee, which is based near the shores of the Chiemsee, sells sports fashion clothing, shoes and other sports goods which are designed by a sister company based in the same place, but are manufactured elsewhere. The goods bear the designation `Chiemsee'. Between 1992 and 1994, Windsurfing Chiemsee registered that designation in Germany as a picture trade mark in the form of various graphic designs, in some cases with additional features or words such as `Chiemsee Jeans' and `Windsurfing - Chiemsee - Active Wear'.

11 According to the orders for reference, there is no German trade mark by which the word `Chiemsee' as such is protected. The German registration authorities have hitherto regarded the word `Chiemsee' as an indication which may serve to designate geographical origin and which is consequently incapable of registration as a trade mark. However, they have allowed the various particular graphic representations of the word `Chiemsee' and the additional accompanying features to be registered as picture marks.

12 Huber has been selling sports clothing such as T-shirts and sweat-shirts since 1995 in a town situated near the shores of the Chiemsee. The clothing bears the designation `Chiemsee', but this is depicted in a different graphic form from that of the trade marks which identify Windsurfing Chiemsee's products.

13 Mr Attenberger sells the same type of sports clothing in the Chiemsee area, also bearing the designation `Chiemsee', but using different graphic forms and, for certain products, additional features different from those of Windsurfing Chiemsee.

14 In the main proceedings, Windsurfing Chiemsee challenges the use by Huber and Mr Attenberger of the name `Chiemsee', claiming that, notwithstanding the differences in graphic representation of the marks on the products in question, there is a likelihood of confusion with its designation `Chiemsee' with which, it claims, the public is familiar and which has in any case been in use since 1990.

15 The defendants in the main proceedings, on the other hand, contend that, since the word `Chiemsee' is an indication which designates geographical origin and must consequently remain available, it is not capable of protection, and that using it in a different graphic form from that used by Windsurfing Chiemsee cannot create any likelihood of confusion.

16 The Landgericht München I makes the following observations in its orders for reference:

- if a mark consists of a descriptive indication within the meaning of Article 3(1)(c) of the Directive represented in an unusual graphic way, then the distinctive character of the mark and the extent to which it is protected are based only on the particular graphic components to be protected. Any likelihood of confusion can result only from a similarity between those components, not from any similarity between the descriptive elements;

- even if the competent authority has registered a trade mark only on the basis of a particular graphic form of a word which it regards as incapable of protection in itself, the court hearing an infringement dispute may take the view that the word itself is none the less entitled to protection and determine the `overall impression' and distinctive character of the disputed mark differently from the registration authority;

- in order for the main proceedings to be decided, it must be determined whether and, if so, to what extent the interpretation of Article 3(1)(c) of the Directive is affected and restricted by a `need to leave free' (`Freihaltebedürfnis'), which under German case-law must be a real, current or serious need. If it is unnecessary to have regard to or to evaluate a `serious need to leave free', then the word `Chiemsee' is automatically covered by Article 3(1)(c), because it may in any event serve to designate the geographical origin of clothing. If, however, consideration must be given to a `serious need to leave free', then the fact that there is no textile industry on the shores of the Chiemsee must also be taken into account. The plaintiff's products may be designed there, but they are manufactured abroad;

- the question may also arise whether the word `Chiemsee', can, following the use made of it, be protected as a trade mark without being registered under Section 4(2) of the Markengesetz. Since it follows that the requirements of Section 4(2) are fulfilled if those of Section 8(3) are fulfilled, Article 3(3) of the Directive, which constitutes the basis for Section 8(3), calls for interpretation;

- the question then arises whether Article 3(3) of the Directive implies that a sign is capable of registration when it has been used as a trade mark for a sufficient length of time and to a sufficient degree, such that a not inconsiderable proportion of the relevant circles view it as a trade mark or whether, as the German legislature has suggested by its use of the concept of `trade acceptance' (`Verkehrsdurchsetzung') in Section 8(3) of the Markengesetz, the strict requirements which it has hitherto been German practice to impose continue to apply - which would suggest, inter alia, that the extent of `trade acceptance' required varies according to how important it is for the designation to be left free (`Freihalteinteresse').

17 In those circumstances, the Landgericht München I, seeking guidance on the interpretation of the Directive, decided to stay proceedings and refer the following questions to the Court of Justice for a preliminary ruling:

`1. Questions on Article 3(1)(c):

Is Article 3(1)(c) to be understood as meaning that it suffices if there is a possibility of the designation being used to indicate the geographical origin, or must that possibility be likely in a particular case (in the sense that other such undertakings already use that word to designate the geographical origin of their goods of similar type, or at least that there are specific rea