Case T-318/09

Audi AG and Volkswagen AG

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)

(Community trade mark – Application for the Community word mark TDI – Absolute ground for refusal – Descriptive character – No distinctive character acquired through use – Article 7(1)(c) and 7(3) of Regulation (EC) No 207/2009 – Articles 75 and 76(1) of Regulation No 207/2009)

Summary of the Judgment

1.      Community trade mark – Definition and acquisition of the Community trade mark – Absolute grounds for refusal – Marks composed exclusively of signs or indications which may serve to designate the characteristics of goods

(Council Regulation No 207/2009, Art. 7(1)(c))

2.      Community trade mark – Definition and acquisition of the Community trade mark – Absolute grounds for refusal – Mark devoid of distinctive character – Exception – Acquisition of distinctive character through use

(Council Regulation No 207/2009, Art. 7(1)(b) and (3))

1.      The word sign TDI, registration of which as a Community trade mark is sought for ‘vehicles and constructive parts thereof’ in Class 12 of the Nice Agreement, may serve to designate, within the meaning of Article 7(1)(c) of Regulation No 207/2009 on the Community trade mark, the essential characteristics of the goods and services referred to in the trade mark application.

As regards vehicles, that word sign, which is an abbreviation of ‘turbo diesel injection’ or ‘turbo direct injection’, designates the quality, given that being equipped with a ‘turbo diesel injection’ or ‘turbo direct injection’ engine is an essential characteristic of a vehicle. As regards constructive parts for vehicles, the word sign TDI designates the type of goods.

In addition, the sign TDI is descriptive of the goods concerned in the entire European Union. Since the vehicles are, in principle, sold under the same names on the entire internal market, there is no difference between the various parts of the European Union in terms of the relevant public’s understanding of the meaning of that sign and of the link between that sign and the goods in respect of which registration is sought.

(see paras 18-19)

2.      A mark can be registered by virtue of Article 7(3) of Regulation No 207/2009 on the Community trade mark only if evidence is provided that it has acquired, through the use which has been made of it, distinctive character in the part of the European Union in which it did not, ab initio, have such character. The part of the European Union referred to in Article 7(2) may be comprised of a single Member State.

It is thus in all the Member States of the European Union in which the mark applied for did not, ab initio, have distinctive character that it must have become distinctive through use in order to be registrable under Article 7(3) of Regulation No 207/2009. Furthermore, the evidence adduced with regard to certain Member States is not capable of proving that the sign has acquired distinctive character in the other Member States of the European Union.

(see paras 46-47)