Case C-404/02

Nichols plc

v

Registrar of Trade Marks

(Reference for a preliminary ruling from the High Court of Justice of England and Wales, Chancery Division)

(Trade marks – Directive 89/104/EEC – Article 3(1)(b) – Trade mark comprising a common surname – Distinctive character – Impact of Article 6(1)(a) on assessment)

Summary of the Judgment

Approximation of laws – Trade marks – Directive 89/104 – Refusal to register or nullity – Lack of distinctive character – Assessment of the distinctive character of a trade mark constituted by a common surname – Assessment according to the same criteria as those applicable to other categories of trade marks – Effects limited to such a trade mark – No impact

(Council Directive 89/104, Arts 3(1)(b), and (6)(1)(a))

In the context of Article 3(1)(b) of First Directive 89/104 on trade marks, the assessment of the existence or otherwise of the distinctive character of a trade mark constituted by a surname, even a common one, must be carried out specifically, in accordance with the criteria applicable to any sign covered by Article 2 of that directive, in relation, first, to the products or services in respect of which registration is applied for and, second, to the perception of the relevant consumers. The fact that the effects of registration of the trade mark are limited by virtue of Article 6(1)(a) of that directive has no impact on that assessment.

(see para. 34, operative part)