TRADE MARK LAW
Interpretation of absolute grounds for refusal in light of objective pursued – underlying general interest
• In examining that argument, due account must be taken of the objective pursued by Article 7(1)(c) of Regulation No 40/94. Each of the grounds for refusal listed in Article 7(1) must be interpreted in the light of the general interest underlying it.
Need to keep free: Actual use as usual means of designation not required
• that the application of Article 7(1)(c) of Regulation No 40/94 does not require the sign at issue to be the usual means of designation.
Overlap between need to keep free and distinctiveness requirement
• There is therefore a measure of overlap between the scope of Article 7(1)(b) of Regulation No 40/94 and the scope of Article 7(1)(c) of that regulation […] Article 7(1)(b) being distinguished from Article 7(1)(c) in that it covers all the circumstances in which a sign is not capable of distinguishing the goods or services of one undertaking from those of other undertakings.
Numerals particularly suitable to describe a characteristic e.g. content
• Given that such signs are generally equated with numbers, one of the things that they can do, in trade, is to designate a quantity. […].
• Without it being necessary to determine whether each of those factors supported the inference that the number 1000 characterises the goods referred to in the application for registration, the fact remains that, at the very least, the finding made by the General Court, to the effect that the sign ‘1000’ is descriptive in relation to the collections of puzzles contained in those goods, is not incompatible with the specific points made above regarding the scope of Article 7(1)(c) of Regulation No 40/94.
Rules governing the exercise of powers by BHIM
• That said, the way in which the principles of equal treatment and sound administration are applied must be consistent with respect for legality.
General Court was entitled to find, in paragraph 33 of the judgment under appeal, that, in the light of the conclusion which it had already reached in the preceding paragraphs of that judgment to the effect that registration of the sign ‘1000’ as a mark in respect of the goods referred to in Technopol’s application was incompatible with Regulation No 40/94, Technopol could not reasonably rely, for the purposes of casting doubt on that conclusion, on OHIM’s previous decisions
IPPT20110310, CJEU, Wydawnicza Technopol v OHIM
