The matter at hand
The German company Apcoa Parking applied for an EU figurative mark containing the word element ‘parkway’, and a EUTM solely consisting of that word element, both for services in classes 35, 39, 42 and 45 (inter alia, rental services for parking spaces and car parks). EUIPO refused the applications, finding them descriptive and devoid of distinctive character. This decision was upheld by the Fourth Board of Appeal
Apcoa Parking appealed to the General Court, referring to a decision by the Intellectual Property Office of the United Kingdom, in which it was held that the word element ‘parkway’, when used in isolation and not in conjunction with a place name, was not descriptive. Apcoa Parking pointed out that in line with that decision, several identical marks consisting of the element ‘parkway’ had been successfully registered by the national offices in a number of Member States. Refusing the applications on a EU level, would bar Apcoa Parking from unitary trade mark protection.
The General Court rejected the appeal, conisdering that EUIPO and its appeal bodies are not bound by national decisions and are not required to take such decisions into account in assessing whether a trade mark may be registered or not. According to the General Court, the EUIPO and the Board of Appeal had rightfully concluded that the element ‘parkway’ is descriptive for the services applied for by referring to names of existing parking facilities in train stations, such as ‘Liverpool Parkway’ and ‘Bristol Parkway’. Disagreeing with the General Court, Apcoa brought the case before the ECJ.
The judgment of the ECJ
The ECJ recalls that the EU trade mark regime is an autonomous system with its own set of objectives and rules, functioning independently from the Member States’ national trade mark systems. The EU trade mark system does not (intend to) replace those systems, but coexists alongside it.
Therefore, as the General Court ruled, EUIPO (and its appeal bodies, as well as the General Court and ECJ for that matter) are not bound by national decisions rendered on a Member State level. The fact that a trade mark is already registered in one or more Member States as a national mark, is merely a factor that can be taken into account in the examination of an application for an EU trade mark. EUIPO is, however, under no obligation to follow the assessment of the national authorities or to register a mark on the basis of those considerations, so the ECJ emphasizes.
The ECJ further holds that the General Court did not err in law by considering names of existing parking facilities in train stations, even though not all of the stations actually still offered those facilities. What matters is that these examples show that the public, notably that of the United Kingdom, understands the term ‘parkway’ as a reference to a parking facility in or nearby a train station. Consequently, the ECJ dismissed the appeal.