A ground for refusal that exists for certain products cannot be overcome by limiting the application to products that do not have a certain characteristic.[1]
If, for example, the term 'white' is to be registered for clothing, it can describe the colour of the product and thus a characteristic. The resulting not protectable nature cannot be countered by limiting the application to 'clothing that does not have the colour white'. The trade mark 'electronica' is descriptive of an electronics trade fair even if protection is to be limited to a very specific trade fair in Munich.[2]
This is because allowing such restrictions would lead to legal uncertainty regarding the scope of trade mark protection. Third parties - in particular competitors - would generally not be informed that, for certain products, the protection conferred by the trade mark does not extend to those products which have a certain characteristic and could thus be induced, when describing their own products, to refrain from using the signs or indications which make up the trade mark and which describe that characteristic.[3] The same applies, respectively, to the restriction to certain marketing concepts.[4]
Footnotes
CJEU C-363/99 of 12 February 2004 Postkantoor, ref. 117.
↩GC T-32/00 of 5 December 2000 electronica, ref. 62 ff.; descriptive for financial services therefore also ‘MunichFinancialServices’: GC T-316/03 of 7 June 2005 MunichFinancialServices, ref. 24 ff.
↩CJEU C-363/99 of 12 February 2004 Postkantoor, ref. 115.
↩See GC T-355/00 of 20 March 2002 TELE AID, ref. 41 f.; GC T-356/00 of 20 March 2002 CARCARD, ref. 45 f.; GC T-358/00 of 20 March 2002 TRUCKCARD, ref. 46 f.; GC T-323/00 of 2 July 2002 SAT.2, ref. 45; on the irrelevance of distribution concepts in conflict cases GC T-147/03 of 12 January 2006 Quantième/Quantum, ref. 104.
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