In EUROPOLIS (Case C-108/05) the European Court of Justice gave a preliminary ruling (7 September) on the territory in which it is proper to assess the three absolute grounds for refusal or for invalidity of a trade mark registration which can be overcome by the acquisition of distinctive character through use (Article 3(1) and 3(3) Trade Marks Directive 89/104/EEC).

EUROPOLIS considered what territory must be taken into account in order to determine whether a sign has indeed acquired such distinctive character through use.

The issue is particularly acute in Member States where different official languages are spoken in different parts of their territory. One example is Benelux which, for trade mark law purposes, is one single territory and where Dutch, French, German and Luxembourg are all official languages. A sign might be generic or descriptive of certain goods in one official Benelux language and not in the others. In order to overcome that absolute ground of refusal or of invalidity, must the applicant/holder provide proof of acquired distinctiveness in the entire territory or only in that part of the territory where the language in which the term is generic, descriptive or customary, is spoken?

A Dutch insurance company had applied to register EUROPOLIS as a Benelux word mark in relation to insurance services. The Benelux Trade Mark Office refused to register it on the basis that "polis" is in Dutch the usual word for insurance contract and that EUROPOLIS is therefore descriptive and devoid of distinctive character. The grounds for refusal, however, were found to exist only in the part of Benelux where Dutch is spoken. The term "polis" does not have that generic meaning in the other official Benelux languages. The matter went to court and the applicant developed the alternative argument that EUROPOLIS had become distinctive through use before the date of application. The parties disagreed as to what territory must be taken into account for that determination, and the Court referred questions on that issue to the ECJ.

The ECJ decided that the trade mark must have acquired distinctiveness through use throughout the territory of the Member State (or, in the case of Benelux, throughout the part of the territory of Benelux) in which there exists a ground for refusal. As regards a mark consisting of one or more generic words in an official language of a Member State or of Benelux, it must be established that the mark has acquired distinctiveness through use vis-à-vis the relevant class of persons, or at least a significant proportion thereof, in the linguistic area(s) in which the ground for refusal exists.

So to assess whether the mark has acquired distinctiveness through use in this case, the court must take into account the views of a significant proportion of the relevant public in that part of Benelux where Dutch is spoken.

There is a parallel with the case law on Community trade marks. In a judgment of 30 March 2000 (Case T-91/99, OPTIONS), the Court of First Instance ruled that in order to overcome the same absolute grounds of refusal, the Community trade mark must have acquired distinctiveness through use in a substantial part of the Community where it is devoid of any such character.

This article is intended merely to highlight issues and not to be comprehensive, nor to provide legal advice. Should you have any questions on issues reported here or on other areas of law, please contact one of your regular contacts at Linklaters.