Geography Reference
In-Depth Information
the word 'Chiemsee' was an indication which designated geographical origin it
must consequently remain available and thus was not capable of protection. The
applicant claimed that the word 'Chiemsee' had acquired the secondary mean-
ing under Art 3 of the Trade Marks Directive of referring to products
emanating from it. The ECJ listed the following factors to be considered in
establishing acquired distinctiveness: the market share held by the mark; how
intensive, geographically widespread and long-standing use of the mark has
been; the amount invested by the undertaking in promoting the mark; the
proportion of the relevant class of persons who, because of the mark, identify
goods as originating from a particular undertaking; and statements from
chambers of commerce and industry or other trade and professional associa-
tions.
37
6.32
The Court concluded that 'if, on the basis of those factors, the competent
authority finds that the relevant class of persons, or at least a significant
proportion thereof, identify goods as originating from a particular undertaking
because of the trade mark, it must hold that the requirement for registering the
mark laid down in Art 3(3) of the Directive is satisfied'.
38
As regards the
method to be used to assess the distinctive character of a mark in respect of
which registration is applied for, the ECJ noted that Community law did not
preclude the competent authority, where it has particular difficulty in that
connection, from having recourse, under the conditions laid down by its own
national law, to an opinion poll as guidance for its judgment.
39
i. Designation of geographical area
Joined Cases C-108/97 and C-109/97
40
also concerned an evaluation by the
ECJ of what constituted a geographical area for the purposes of the Directive.
The relevant national law which implemented the Directive was the German
Markengesetz (Law on Trade Marks), which has been applicable since 1
January 1995. Under s 8(2)(2) of the Markengesetz, trade marks 'which consist
exclusively of indications which may serve in trade to designate the geographi-
cal origin or other characteristics of the goods are to be refused registration'.
Pursuant to s 8(3) of the Markengesetz, s 8(2)(2) does not apply 'if the mark,
before the time of the decision on registration, as a result of its use for the goods
in respect of which registration has been applied for, has gained acceptance
6.33
37
Ibid, at para 51.
38
Ibid, at para 52.
39
Ibid, at para 53, referring to Case C-210/96
Gut Springenheide and Tusky
ν
Oberkreisdirektor des Kreises
Steinfurt-Amt für Lebensmittelüberwachung
[1998] ECR I-4657, at para 37.
40
Windsurfing Chiemsee (Law relating to undertakings)
[1999] [2000] 2 WLR 205, [1999] EUECJ C-108/97,
[2000] Ch 523, [1999] ECR I-2779.
