Case C-404/02

Nichols plc

v

Registrar of Trade Marks

(Reference for a preliminary ruling from the High Court of Justice of England and Wales, Chancery Division)

(Trade marks – Directive 89/104/EEC – Article 3(1)(b) – Trade mark comprising a common surname – Distinctive character – Impact of Article 6(1)(a) on assessment)

Summary of the Judgment

Approximation of laws – Trade marks – Directive 89/104 – Refusal to register or nullity – Lack of distinctive character – Assessment of the distinctive character of a trade mark constituted by a common surname – Assessment according to the same criteria as those applicable to other categories of trade marks – Effects limited to such a trade mark – No impact

(Council Directive 89/104, Arts 3(1)(b), and (6)(1)(a))

In the context of Article 3(1)(b) of First Directive 89/104 on trade marks, the assessment of the existence or otherwise of the distinctive character of a trade mark constituted by a surname, even a common one, must be carried out specifically, in accordance with the criteria applicable to any sign covered by Article 2 of that directive, in relation, first, to the products or services in respect of which registration is applied for and, second, to the perception of the relevant consumers. The fact that the effects of registration of the trade mark are limited by virtue of Article 6(1)(a) of that directive has no impact on that assessment.

(see para. 34, operative part)

JUDGMENT OF THE COURT (Second Chamber) 16 September 2004 (1)

(Trade marks – Directive 89/104/EC – Article 3(1)(b) – Trade mark comprising a common surname – Distinctive character – Impact of Article 6(1)(a) on assessment)

In Case C-404/02

REFERENCE for a preliminary ruling under Article 234 EC,

from the High Court of Justice of England and Wales, Chancery Division, made by decision of 3 September 2002, registered at the Court on 3 September 2002, registered at the Court on 12 November 2002, 12 November 2002, in the proceedings brought by

v

THE COURT (Second Chamber),,

composed of: C.W.A. Timmermans, President of the Chamber, C. Gulmann (Rapporteur), J. P. Puissochet, R. Schintgen and N. Colneric, Judges,

Advocate General: D. Ruiz-Jarabo Colomer,

having regard to the written procedure and further to the hearing on 27 November 2003,after considering the observations submitted on behalf of:

after hearing the Opinion of the Advocate General at the sitting on 15 January 2004,

gives the following

‘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.’

‘1.

...’

‘1.

...

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

...’

cannot be applied to such trade marks.

On those grounds, the Court of Justice (Second Chamber) rules as follows:

Signatures.