ARTICLE · 14 DECEMBER 2006

Acquisition Of Distinctive Character Through Use

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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).

European UnionIntellectual Property

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

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