Appraising the Distinctiveness of Different Categories of Trade Marks in EC Law

Abstract: In the doctrine, Articles 7(1)(b) to (d) CTMR, which preclude the registration of non-distinctive, descriptive and generic signs, are considered to form a part of a single, indivisible concept of distinctiveness, which is one of the most fundamental concepts in trade mark law. When assessing the distinctiveness of trade marks under these provisions, the CFI and the ECJ insist that all categories of trade marks are subject to the same criteria. In order to establish whether the Community courts indeed adhere to this statement and apply such a principle in their own case law, the present thesis examines the criteria applied to word marks, figurative marks, slogans, three-dimensional marks and colour marks. After a detailed examination and analysis of the criteria for the appraisal of distinctiveness of the above-mentioned marks, it is established that the Community courts, in fact, do not apply the same criteria to all categories. Although they recognize that the perception of the relevant public is not necessarily the same concerning non-conventional marks, such as slogans, three-dimensional marks and colour marks, as it is with regard to conventional word and figurative marks, the Community courts nevertheless persistently claim that the criteria for the assessment should be the same. Such an approach is criticized and it is argued that the Community courts have not provided any convincing arguments for not developing specific, tailor-made criteria for the assessment of non-conventional marks. In conclusion, some suggestions for the development of further clarifications and criteria for the assessment are given. Above all, it is submitted that the Community courts should reconsider their understanding of the concept of distinctiveness, which is currently split in two parts - one concerned with the consumer protection and the other related to the protection of competitors of the trade mark applicant. It is argued that this artificial division should be eliminated, as it is inconsistent with the indivisible nature of the concept of distinctiveness and is contrary to the fact that the distinctiveness is one of the points in trade mark law at which the interests of consumers and traders tend to converge.