## Facts

- Hukla Germany SA obtained a Spanish national word-mark registration for “MATRATZEN” covering mattresses and related goods.
- “Matratzen” is the German plural for “mattresses” and is generic/descriptive for those goods in German.
- In Spain, the term is foreign-language and not ordinarily used in Spanish.
- Matratzen Concord AG challenged the validity of Hukla’s Spanish registration, arguing that a generic term in another EU Member State’s language should not be monopolized as a mark.
- A Spanish trial court rejected the invalidity claim; on appeal, the Barcelona Provincial Court referred questions to the Court of Justice of the European Union (CJEU) for a preliminary ruling on EU law.

## Issues

1. In a field harmonized by EU legislation on trade marks, must validity of a national registration be assessed under the directive rather than directly under Treaty free-movement provisions?
2. Do absolute grounds for refusal/invalidity (lack of distinctiveness; descriptiveness) bar registration of a foreign-language term that is descriptive or non-distinctive in another Member State?
3. Do EU free-movement rules independently prevent registration of such a mark?

## Decision

- The CJEU held that where conditions for obtaining and holding registered trade marks are exhaustively harmonized, national measures are assessed under the harmonizing directive rather than directly under Treaty free-movement provisions.
- The CJEU held the directive does not categorically bar registering a term borrowed from another Member State’s language even if it is descriptive or non-distinctive there, unless the relevant public in the registering Member State can identify the term’s meaning.
- The CJEU held free movement of goods does not prohibit a Member State from registering a national trade mark that is descriptive or non-distinctive in another Member State’s language.
- The CJEU left to the referring Spanish court the factual determination whether the relevant Spanish public understands “Matratzen” as meaning “mattresses,” which would trigger refusal/invalidity under the directive.

## Legal Principles

- In an exhaustively harmonized field, legality of national measures is evaluated primarily by reference to the harmonizing EU instrument, not Treaty provisions.
- Distinctiveness and descriptiveness are assessed by reference to the perception of the relevant public in the Member State where protection is sought.
- A foreign-language term that is descriptive or generic in its source language may be registrable if consumers in the registration state do not understand the descriptive meaning.
- Treaty free-movement rules generally constrain the exercise of intellectual property rights, not the mere existence of a nationally granted right; registration is not barred solely because the sign is descriptive in another Member State’s language.

## Conclusion

The CJEU ruled that EU trade-mark harmonization governs validity analysis and that a foreign-language generic term is not automatically excluded from registration; refusal or invalidity depends on whether consumers in the registration state understand the term’s descriptive meaning, a factual question for the national court.


Matratzen Concord AG v. Hukla Germany SA (Case C-421/04), 2006 E.C.R. I-2303 (C.J. Mar. 9, 2006)