Grounds for refusal must always be assessed in relation to the nature of the goods or services for which the trade mark has been applied for.[1] If there are grounds for refusing registration of a trade mark for only some of the products for which the trade mark has been applied for, it will only be refused for those products (Art. 7 TMD, Art 42 I EUTMR, Sec. 37 V MarkenG).[2] If registration of a trade mark is applied for for different products, it must therefore be examined whether the trade mark is not subject to a ground for refusal in relation to each of those products. This examination can lead to different results for the products concerned.[3]
For example, the term 'water' is a product name for the product 'mineral waters', but not for 'clothing'. Therefore, 'water' would not be registrable as a trade mark for 'mineral waters', but it would be registrable for 'clothing'. The fact that the sign designates 'water' and thus a different product than 'clothing' is harmless. The descriptive nature of a trade mark in relation to certain products does not constitute a barrier to the registration of that trade mark for other products.[4] 'VOODOO' is also not descriptive for 'clothing'.[5] The term 'grill meister' is devoid of distinctive character for products used for barbecuing, but not for 'beer'. [6] The number '1' is also distinctive for cigarettes and smoking articles, in particular, there is no descriptive use apparent.[7] On the other hand, the number '1' is not distinctive for the services of a television channel because the public is used to single-digit numbers in the context of television programmes.[8]
Footnotes
Constant case law, instead of many: CJEU C-299/99 of 18 June 2002 Philips/Remington, ref. 59; CJEU C-218/01 of 12 February 2004 Henkel, ref. 31; CJEU C-363/99 of 12 February 2004 Postkantoor, ref. 71 and 75; CJEU C-456/01 P and C-457/01 P of 29 April 2004 Three dimensional tablet form I, ref. 35; CJEU C-64/02 P of 21 October 2004 DAS PRINZIP DER BEQUEMLICHKEIT, para. 43; CJEU C-304/06 P of 8 May 2008 Eurohypo, para. 67; CJEU C-398/08 P of 21 January 2010 Audi, para. 34; CJEU C-307/10 of 19 June 2012 Chartered Institute of Patent Attorneys, para. 43; CJEU C-217/13 of 19 June 2014 Oberbank, para. 39. 2014 Oberbank, para. 39; CJEU C-417/16 P of 4 May 2017 August Storck, para. 32; CJEU C-139/16 of 6 July 2017 Moreno Marín, para. 24; CJEU C-26/17 P of 13 September 2018 Birkenstock Sales, para. 31; CJEU C-541/18 of 12 September 2019 AS, para. 20; CJEU C-783/18 P of 12 December 2019 EUIPO/Wajos, para. 23; GC C-456/19 of 8 October 2020 Aktiebolaget Östgötatrafiken, para. 32; EFTA Court E-5/16 of 8 April 2017 Municipality of Oslo, paras. 76 and 137; GC T-359/99 of 7 June 2001 EuroHealth, para. 23; CJEU T-387/03 of 19 January 2005 BIOKNOWLEDGE, para. 48 ff.; BGH GRUR 2002, 261, 262 AC, with further ref.
↩CJEU C-239/05 of 15 February 2007 BVBA, ref. 33.
↩CJEU C-363/99 of 12 February 2004 Postkantoor, ref. 73; CJEU C-239/05 of 15 February 2007 BVBA, ref. 32; also Art. 7 TMD and the request for a preliminary ruling CJEU C-254/06 Zürich Versicherungs-Gesellschaft.
↩See CJEU C-363/99 of 12 February 2004 Postkantoor, ref. 75 ff.
↩GC T-50/13 of 18 November 2014 VOODOO, ref. 33 and 37.
↩BGH I ZB 11/13 of 17 October 2013 grill meister, ref. 20.
↩BGH GRUR 2002, 970, 972 number ‘1’; respectively BGH Mitt. 2002, 423 number ‘6’; similarly BGH GRUR 2000, 231, 232 FÜNFER.
↩BGH GRUR 2000, 608, 610 ARD-1.
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