Joined Cases T-425/07 and T-426/07

Agencja Wydawnicza Technopol sp. z o.o.

v

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

(Community trade mark – Applications for Community figurative marks 100 and 300 – Statement as to the scope of protection – Article 38(2) of Regulation (EC) No 40/94 (now Article 37(2) of Regulation (EC) No 207/2009) – Lack of distinctive character)

Summary of the Judgment

1.      Community trade mark – Registration procedure – Examination of the application – Trade mark containing an element which is devoid of distinctive character – Option for the Office to request a statement relating to that element

(Council Regulation No 40/94, Art. 38(2))

2.      Community trade mark – Registration procedure – Examination of the application – Trade mark containing an element which is devoid of distinctive character – Option for the Office to request a statement relating to that element

(Council Regulation No 40/94, Art. 38(2))

1.      In the case of the figurative signs composed, on the hand, of the numerical elements 100 and 300 and, on the other, of figurative elements such as colours, frames, ribbons and the typography used, in respect of which registration as a Community trade mark is sought for ‘Posters; albums; booklets; magazines; forms; printed matter; newspapers; calendars; crossword puzzles; rebuses’ and ‘Manipulative puzzles; riddles; puzzles’ in Classes 16 and 28 respectively of the Nice Agreement, the Office for Harmonisation in the Internal Market (Trade Marks and Designs) may request, as a condition for registration, that the applicant state that he disclaims any exclusive right to the numerical elements.

The figures 100 and 300 refer to quantities, and will immediately be perceived by the average consumer, without further thought, throughout the European Community as a description of characteristics of the goods in question, in particular the number of posters in the sales batches, the number of pages in the publications or the number of pieces in the puzzles and riddles, which determine their degree of difficulty and are essential characteristics in deciding whether to make a purchase. Therefore, the relevant public will perceive those numerical elements as providing information on the goods designated and not as indicating the origin of the goods.

As to whether there are doubts concerning the scope of protection, the figurative elements of the marks applied for, that is to say the colours, frames, ribbons and the typography used, are too ordinary to make an impression on consumers. On the other hand, the numerals, as the only word elements, are more likely to attract the attention of the relevant consumers and they thus occupy a dominant position in the impression given by the marks applied for. If registration of the marks applied for were not made subject to any conditions, the impression might therefore be given that the exclusive rights extended to the elements ‘100’ and ‘300’, thereby preventing them from being used in other marks. Consequently, the inclusion of those signs in the marks applied for might give rise to doubts as to the scope of protection afforded to the marks.

(see paras 24-25, 27-28)

2.      Article 38(2) of Regulation No 40/94 on the Community trade mark provides that where a trade mark contains an element which is not distinctive, and where the inclusion of that element could give rise to doubts as to the scope of protection afforded, the Office for Harmonisation in the Internal Market (Trade Marks and Designs) may request, as a condition for registration, that the applicant state that he disclaims any exclusive right to that element.

The function of that ‘disclaimer’ is to make apparent the fact that the exclusive rights of the proprietor of a mark do not extend to the non-distinctive elements of that mark. In that way, applicants may know that the non-distinctive elements of a registered mark in respect of which a disclaimer is made remain available for use.

The consequences of failing to submit the disclaimer required by OHIM are laid down in Rule 11(3) of Regulation No 2868/95 implementing Council Regulation No 40/94. Thus, if an applicant fails to submit the disclaimer required by OHIM within the period specified, OHIM may refuse the application in whole or in part.

(see paras 18-20)