[Editor's note] Like most countries and regions in the world, The rulings of the Court of Justice of the European Union have important guiding significance and predictive value for understanding the legal norms of the European Union. Esabaril (ELZABURU) At the beginning of each year, typical cases of the Court of Justice of the European Union in the previous year are summarized and published, And a brief review of each case, In order to help customers and partners to understand the EU intellectual property norms. Given the importance of Chinese customers and partners, We try to publish the Chinese version of typical cases on a weekly basis, It is convenient for Chinese partners to learn the latest information in a timely manner.

　　 [background]

　　Portugal's Supreme Court appealed to the European Court of Justice (Court of Justice) , To determine whether a logo or word can be registered as a trademark for use on wine merchandise, How to understand "Directive of the European Parliament and of the Council on the harmonisation of trademark laws in the Member States (The first 2008/95/EC No) " (Hereinafter referred to as "European Union regulation 2008/95/EC Number instruction" , Have been "European Union regulation (EU) 2015/2436 Number instruction" replace) The first 3 (1) (c) article "Used in trade activities, Contains only words that directly denote other characteristics of goods or services" To make a preliminary determination.

　　The plaintiff sued for a word mark "adegaborba. pt" void, The reason is that the trademark in question contains only a protected geographical name for wine products—— "Borba" And descriptive words for that commodity—— "adega (cellar) " . but, Argued the registrant of the disputed trademark "adega" It's the name of the company "Adega Cooperativa de Borba" Component of, Not descriptive words.

　　The Court of Admissibility questions the European Court of Justice, The trademark specified for use on wine merchandise contains the protected geographical name of a third party "Borba" And a commonly used descriptive term for a facility or place where such goods are produced "adega" , If the descriptive term appears in the trademark applicant's company name, Whether still belong to "European Union regulation 2008/95/EC Number instruction" The first 3 (1) (c) Article prohibits registration as a trademark?

　　 [conclusion]

　　After the European Court of Justice considers the facts of the case, The ruling is as follows:

　　1. Eu lawmakers draft "European Union regulation 2008/95/EC Number instruction" The first 3 (1) (c) Bar time, use "species, quality, quantity, use, value, Geographical origin, Time of production of goods or services and other characteristics of goods or services" This expression, On the one hand, examples are given of the common circumstances that constitute the characteristics of a good or service; On the other hand, This is not an exhaustive list, Other characteristics of goods or services that may exist should be considered in practice.

　　2. Words appearing in the trademark at issue in this case "adega" It has two meanings in Portuguese: One refers to, Underground storage space for things like wine; And the other one is, Red wine and other products manufacturing sites. Therefore, The term undoubtedly belongs to the descriptive term of the goods specified for use.

　　3. If a contested mark consists entirely of a descriptive term and a geographical name indicating the geographic origin of the goods (If the trademark in dispute in this case "Borba" ) composition, Then the mark shall be identified as the mark describing the characteristics of the commodity, The lack of distinguishing features required for trademark use.

　　4. The fact that the term describing the place where goods are produced or stored appears in the name of the relevant legal entity, The mark does not affect the conclusion of the evaluation of descriptive words, Because the evaluation only considers the goods for which the disputed trademark is intended to be used, And the cognition of the product in the relevant consumer groups.

　　 [comment]

　　The European Court of Justice clearly held that, To determine whether the constituent words of a trademark constitute descriptive words, It is not necessary to consider whether the term appears in the name of the relevant legal entity. An important factor in determining whether a mark can be used as a trademark registration is, Whether the logo as a whole is sufficiently distinguishable.

　　The European Court of Justice again emphasized its role in Agencja Wydawnicza Technopol/OHIM case (Case number: C-51/10P) , and BSH/OHIM case (Case number: C-126/13 P) And so on, namely "European Union regulation 2008/95/EC Number instruction" The first 3 (1) (c) The provisions of the article are not fully enumerated, There may be other circumstances that describe the characteristics of a good or service.

　　Words commonly used in trade activities, etc, Even if the relevant legal entity is part of the company name, It's still possible to be identified as "A word that characterizes a good or service" . Therefore, In assessing whether a trademark application should be rejected because it is absolutely unregistrable, The fact that the company name of the relevant legal entity contains the same words is not taken into account.

　　Finally, Due to "Directive of the European Parliament and of the Council on the harmonisation of trademark laws in the Member States (The first (EU) 2015/2436 No) " (abbreviation "European Union regulation (EU) 2015/2436 Number instruction" ) replace "European Union regulation 2008/95/EC Number instruction" , New order regulation 4 (1) (c) Article 1 Basically copy the original directive 3 (1) (c) Content of a bar (Only minor grammar adjustments) , Therefore, This finding also applies to the new Directive No 4 (1) (c) Understanding of bar.

　　compile: Liu Dan, Esabarry Legal Counsel

　　source: Esabaril (ELZABURU) Intellectual property rights