«(Approximation of laws – Trade marks – Directive 89/104/EEC – Article 3(1) – Ground for refusal to register – Neologism composed of elements each of which is descriptive of characteristics of the goods or services concerned)»

Approximation of laws – Trade marks – Directive 89/104 – Refusal of registration or invalidity – Marks consisting exclusively of signs or indications which may serve to designate the characteristics of the goods – Definition – Neologism consisting of elements descriptive of characteristics of the goods or services concerned – Included where the nature of the combination is not unusual – Existence of synonyms to designate the same characteristics – No effect (Council Directive 89/104, Art. 3(1)(c)) Article 3(1)(c) First Directive 89/104 on trade marks must be interpreted as meaning that a trade mark consisting of a neologism composed of elements each of which is descriptive of characteristics of the goods or services in respect of which registration is sought is itself descriptive of the characteristics of those goods or services for the purposes of that provision, unless there is a perceptible difference between the neologism and the mere sum of its parts: that assumes that, because of the unusual nature of the combination in relation to the goods or services, the word creates an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, with the result that the word is more than the sum of its parts.For the purposes of determining whether the ground for refusal set out in Article 3(1)(c) of Directive 89/104 applies to such a mark, it is irrelevant whether or not there are synonyms capable of designating the same characteristics of the goods or services referred to in the application for registration.see para. 45, operative part

JUDGMENT OF THE COURT (Sixth Chamber) 12 February 2004 (1)

((Approximation of laws – Trade marks – Directive 89/104/EEC – Article 3(1) – Ground for refusal to register – Neologism composed of elements each of which is descriptive of characteristics of the goods or services concerned))

In Case C-265/00,

REFERENCE to the Court under Article 234 EC by the Benelux-Gerechtshof for a preliminary ruling in the proceedings pending before that court between

and

on the interpretation of Articles 2 and 3(1) of 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 (Sixth Chamber),,

composed of: V. Skouris, acting for the President of the Sixth Chamber, C. Gulmann, J.N. Cunha Rodrigues, R. Schintgen and F. Macken (Rapporteur), Judges,

Advocate General: D. Ruiz-Jarabo Colomer,

after considering the written observations submitted on behalf of:

having regard to the Report for the Hearing,

after hearing the oral observations of Campina Melkunie BV and of the Benelux-Merkenbureau at the hearing on 15 November 2001,

after hearing the Opinion of the Advocate General at the sitting on 31 January 2002,

gives the following

Community legislation

...

Relevant Benelux legislation

Observations submitted to the Court

The Court's reply

On those grounds,

THE COURT (Sixth Chamber),

in answer to the questions referred to it by the Benelux-Gerechtshof by judgment of 26 June 2000, hereby rules:

Skouris

Gulmann

Cunha Rodrigues

Schintgen

Macken

Delivered in open court in Luxembourg on 12 February 2004.

R. Grass

V. Skouris

Registrar

President