Joined Cases T-160/02 to T-162/02

Naipes Heraclio Fournier, SA

v

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

(Community trade mark – Proceedings in relation to invalidity – Article 51(1)(a) of Regulation (EC) No 40/94 – Figurative mark comprising the representation of a sword in a pack of cards – Figurative mark comprising the representation of a knight of clubs in a pack of cards – Figurative mark comprising the representation of a king of swords in a pack of cards – Absolute grounds for refusal – Article 7(1)(b) and (c) of Regulation No 40/94)

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 – Existence of other ways of designating the same characteristics – Not relevant

(Council Regulation No 40/94, Art. 7(1)(c))

2.      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 – Figurative marks comprising the representation of a knight of clubs, a king of swords and a sword in a pack of cards

(Council Regulation No 40/94, Art. 7(1)(c))

3.      Community trade mark – Definition and acquisition of the Community trade mark – Absolute grounds for refusal – Separate examination of the various grounds for refusal – Interpretation of the grounds for refusal in the light of the public interest underlying each of them – Overlap between the scope of the grounds for refusal set out in subparagraphs (b) to (d) of Article 7(1) of Regulation No 40/94

(Council Regulation No 40/94, Art. 7(1))

1.      Although Article 7(1)(c) of Regulation No 40/94 on the Community trade mark provides that, to be covered by the ground for refusal of registration set out therein, the mark must be composed ‘exclusively’ of signs or indications which may serve to designate the characteristics of the goods or services concerned, it does not, however, require that those signs or indications should be the only way of designating such characteristics.

(see para. 50)

2.      The marks in question are descriptive of the characteristics of the goods designated within the meaning of Article 7(1)(c) of Regulation No 40/94 on the Community trade mark, from the point of view of the average reasonably well-informed and circumspect consumer, in particular in Spain, the figurative marks representing, on the one hand, a knight of clubs or a king of swords (two of the playing cards known as Spanish playing cards) and, on the other, a sword (the symbol used to represent the swords suit of those cards), which were registered as Community trade marks for ‘playing cards’ falling within Class 16 of the Nice Agreement.

With regard to the first two signs, the designs of the knight of clubs and the king of swords directly conjure up playing cards for the target public, even if a section of that public is not necessarily acquainted with Spanish playing cards, since all persons who have played with any type of cards identify in those drawings the representation of a playing card. With regard to the third sign, the potential consumer, the user of playing cards, will – at least in Spain – perceive the sword as alluding to one of the suits of the Spanish pack of cards. Furthermore, registration of the signs in question could have the effect of preventing registration or use of other designs of the suit swords or of playing cards corresponding to the knight of clubs and the king of swords on Spanish playing cards.

(see paras 47, 53, 56-57)

3.      Each of the grounds for refusal to register listed in Article 7(1) of Regulation No 40/94 on the Community trade mark is independent of the others and calls for separate examination. Furthermore, the various grounds for refusal must be interpreted in the light of the public interest underlying each of them. The public interest taken into account in the examination of each of those grounds for refusal may or even must reflect different considerations, depending upon which ground for refusal is at issue. However, there is a clear overlap between the scope of the grounds for refusal set out in subparagraphs (b) to (d) of Article 7(1) of Regulation No 40/94. In particular, a word mark which is descriptive of characteristics of goods or services for the purposes of Article 7(1)(c) of that regulation is, on that account, necessarily devoid of any distinctive character in relation to those goods or services within the meaning of Article 7(1)(b) thereof. A mark may none the less be devoid of distinctive character in relation to goods or services for reasons other than the fact that it may be descriptive

(see paras 58-59)