BOVEMIJ RULING

Bovemij ruling

Today's the day the European Court of Justice gave its ruling in Case C-108/05 Bovemij Verzekeringen NV v Benelux-Merkenbureau. In essence, the case goes as follows:

Bovemij applied to register the word EUROPOLIS as a Benelux trade mark for services in Classes 36 (insurance; financial affairs etc) and 39 (transport; packaging, etc). The Benelux Trade Mark Office (BMB) refused registration on the ground that

"The sign EUROPOLIS is composed of the common prefix EURO (for Europe) and the noun POLIS and is exclusively descriptive of the services named in classes 36 and 39 relating to a policy in Europe. The sign therefore has no distinctive character ... ".

Bovemij appealed to the Gerechtshof te ’s-Gravenhage, arguing that the sign EUROPOLIS had intrinsic distinctive character and/or had become accepted through use before the date of application. BMB disputed those arguments. The Gerechtshof stayed the proceedings and referred the following questions to the ECJ for a preliminary ruling:

"(1) Must Article 3(3) of [Directive 89/104] be interpreted as meaning that in order to acquire distinctive character (in the present case through a Benelux trade mark) as a result of use, as referred to in that provision, it is necessary that the sign be regarded as a trade mark, before the date of application, by the relevant public throughout the Benelux territory and, therefore, in Belgium, the Netherlands and Luxembourg?

If the answer to Question 1 is in the negative:

(2) Is the condition for registration laid down in Article 3(3) of the Directive satisfied, for the purposes of that provision, if the sign, as result of the use made of it, is regarded as a trade mark by the relevant section of the public in a substantial part of the Benelux territory and can this substantial part be, for example, the Netherlands alone?

(3) (a) When assessing distinctive character acquired through use, within the meaning of Article 3(3) of the Directive, of a sign – consisting of one or more words of an official language in the territory of a Member State (or, as in the case in point, the Benelux territory) – is it necessary to take into account the language regions within that territory?

(b) For registration as a mark, should the other requirements for registration be satisfied, is it sufficient if/required that the sign be regarded as a trade mark by the relevant section of the public in a substantial part of the language region of the Member State (or, as in the case in point, of the Benelux territory) in which that language is an official language?".

The ECJ ruled as follows:

"1. Article 3(3) ... must be interpreted as meaning that the registration of a trade mark can be allowed on the basis of that provision only if it is proven that that trade mark has acquired distinctive character 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.

2. As regards a mark consisting of one or more words of an official language of a Member State or of Benelux, if the ground for refusal exists only in one of the linguistic areas of the Member State or, in the case of Benelux, in one of its linguistic areas, it must be established that the mark has acquired distinctive character through use throughout that linguistic area. In the linguistic area thus defined, it must be assessed whether the relevant class of persons, or at least a significant proportion thereof, identifies the product or service in question as originating from a particular undertaking because of the trade mark".

On a quick and admittedly hasty perusal the IPKat thinks this is the right approach, being along the same lines as that taken in relation to Community trade mark applications. Merpel says, but isn't EUROPOLIS a drearily unimaginative mark in the first place - and so commonplace! The prefix EURO- alone is enough to send a cat to sleep.