• European Perspectives

    Descriptive Marks Laid to Rest as ECJ Decides Matratzen

    If a word mark is descriptive in the language of one E.U. state, should that prevent its registration in other member states? That was the question at the heart of the ECJ’s judgment in Case C-421/04 Matratzen Concord AG v Hukla Germany SA.

     

    Sleeping on Their Rights

    Hukla owned a Spanish trade mark registration for MATRATZEN—which in German means “mattresses”—for “beds” and the like in Class 20. Matratzen had applied to invalidate it on the grounds that the word was descriptive and could mislead in respect of goods not incorporating mattresses.

    The Spanish court agreed that MATRATZEN was non-distinctive and descriptive in German, and that Hukla’s registration enabled Hukla to limit or restrict the free movement of goods by interfering with the import of mattresses from German-speaking Member States. It referred to the ECJ the question of whether, if valid, a trade mark registration for a word that was descriptive or non-distinctive in another member state’s language would constitute a disguised restriction on trade, such that it would be prohibited by Articles 28 and 30 EC.

     

    The Rest is History

    The ECJ held that whether a trade mark was descriptive or non-distinctive had to be considered taking into account the perceptions of the average consumer in the market in which registration was sought. Hence, in this case, it was the perception of the average Spanish consumer that was relevant.

    The Spanish court should, the ECJ ruled, consider whether there were linguistic, cultural, social or economic differences which might render a mark distinctive in Spain, but not in German-speaking countries such as Germany or Austria.

    The question the Spanish court needed to ask was, would the average Spanish consumer recognise a descriptive meaning when encountering MATRATZEN in respect of beds?

    If the answer was “no,” then the registration was not invalid for descriptiveness or non-distinctiveness in Spain, regardless of how clearly descriptive it was elsewhere and despite the potential impact of the registration on the free movement of goods from Germany and Austria into Spain.

     

    Comment

    Although the ECJ’s guidance seems logical, the extent to which it leads to sensible results will depend on how national courts apply it.

    It will be for the Spanish court, for example, to determine whether the average consumer in Spain is capable of discerning the descriptive meaning of MATRATZEN in respect of beds. However, just how many consumers need to be so capable is unclear.

    The German language is, for example, taught at schools and spoken at least minimally in countries throughout the E.U. It is inconceivable that the word will not be understood descriptively by at least some Spanish consumers. On the other hand, in a country like Spain where German is not widely spoken, the majority of Spanish consumers may not know sufficient German to understand the meaning of MATRATZEN. The outcome in such a case will therefore depend on how many average consumers the national court considers is enough to justify a finding of descriptiveness.

    Given the potential for such descriptive registrations to impede the free movement of goods in the E.U., national courts will need to apply this ruling with care. Brand owners whose marks are known to be descriptive in one member state will need to take this ruling into account in deciding how, and whether, to extend protection. Meanwhile, those wishing to challenge them will no doubt be dusting off their dictionaries.