Trade Mark - Interpretation of Directive - Trade Mark Refusal

By Rosanna Cooper

The case of BVBA Management, Training en Consultancy v Benelux-Merkenbureau [2007], concerned the interpretation of First Council Directive (EEC) 89/104 in the refusal of a trade mark registration. BVBA Management, Training en Consultancy (“MT&C”) filed an application with the Benelux trade mark office (“the Trade Mark Office”) for registration of the word mark 'The Kitchen Company' as a trade mark in respect of classes 11, 20 and 21, and for certain services in classes 37 and 42.

The goods and services for which trade mark protection was sought were set out for each of the relevant classes. The Trade Mark Office notified the applicant that it was refusing registration on the grounds that the word mark lacked distinctive character pursuant to national legislation. The national law in question was the Uniform Benelux Law on Trade Marks. The Trade Mark Office subsequently gave notice of a definite refusal.

The Trade Mark Office did not formulate separate conclusions in respect of each of the individual goods and services. It was of the opinion that the sign lacked distinctive character for all the trade marks. MT&C challenged the refusal before the Court of Appeal, seeking annulment of the decision.

The decision that the word mark lacked any distinctive character in respect of all of the goods and services specified in the application was upheld, with the exception of certain goods in class 21. Of the goods in that class, it was held that only kitchen utensils had any distinctive character on the basis of their nature and intended purpose. With regards to the other goods, it was held that the word combination ‘The Kitchen Company’ did not refer to the intended use of the goods in the perception of the average consumer. It was also decided that the mark was not distinctive with regards to those goods.

The national court paused the proceedings and referred certain questions to the European Court of Justice for a preliminary ruling on the interpretation of First Council Directive (EEC) 89/104 (“the Directive”). The national court asked whether the Directive had to be interpreted as:

- Meaning that, when refusing registration of a trade mark, the competent authority was required to state in its decision its conclusion separately for each of the individual goods and services specified in the application for registration;

- Precluding national legislation which prevented the court reviewing the decision of the competent authority from ruling on the distinctive character of the mark for each of the goods and services considered separately; and

- Precluding national legislation which prevented the court reviewing the decision of the competent authority from taking account of facts and circumstances which arose after that decision had been made.

The ECJ ruled:

- the Directive had to be interpreted as meaning that, when refusing registration of a trade mark, the competent authority was required to state in its decision its conclusion for each of the individual goods and services specified in the application for registration, regardless of the manner in which that application was formulated.

However, where the same ground of refusal was given for a category or group of goods or services, the competent authority might use only general reasoning for all of the goods or services concerned.

- the Directive did not preclude national legislation which prevented the court reviewing the decision of the competent authority from ruling on the distinctive character of the mark separately for each of the individual goods and services specified in the trade mark application, where neither that decision nor that application related to categories of goods or services and/or goods or services considered separately.

- the Directive did not preclude national legislation which prevented the court reviewing a decision of the competent authority from taking account of facts and circumstances which arose after that decision had been made.

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