Judgment — ECLI:EU:T:2002:245
Date: 2002-10-09
Based on: Treaty establishing the European Economic Community (1957)
Subject matter: Trade marks;Intellectual, industrial and commercial property
Concepts: Signs of which a trade mark may consist;Marks devoid of any distinctive character;General;Appeals before the Boards of Appeal
Procedure: Action for annulment - successful
Origin: Belgium

Summary of the Judgment 
1. Community trade mark — Definition and acquisition of the Community trade 
mark — Signs capable of constituting a trade mark — Design applied to the surface 
of goods — Condition — Distinctive character 
(Council Regulation No 40/94, Art. 7(1)(b)) 
II - 3887 
SUMMARY — CASE T-36/01 
2. Community trade mark — Definition and acquisition of the Community trade 
mark — Absolute grounds for refusal — Marks devoid of any distinctive char­
acter — Signs consisting of a design applied to the surface of goods — Distinctive 
character — Assessment criteria 
(Council Regulation No 40/94, Art. 7(1)(b)) 
3. Community trade mark — Definition and acquisition of the Community trade 
mark — Absolute grounds for refusal — Marks devoid of any distinctive char­
acter — Design applied to the surface of goods 
(Council Regulation No 40/94, Art. 7(1)(b)) 
4. Community trade mark — Definition and acquisition of a Community trade mark — 
Assessment of registrability of a sign — Regard had to Community legislation only — 
Earlier registration of the trade mark in certain Member States — Decisions not 
binding on the Community courts 
(Council Regulation No 40/94) 
5. Community trade mark — Decisions of the Office — Legality — Consideration by 
the Community Court — Criteria 
(Council Regulation No 40/94) 
6. Community trade mark — Appeal procedure — Decision on the appeal — Where 
the Board of Appeal exercises powers of the examiner — Obligation to observe the 
rights of the defence 
(Council Regulation No 40/94, Arts 38(3), 62(1) and 73) 
1. A design applied to the surface of 
goods is capable of constituting a 
Community trade mark within the 
meaning of Regulation No 40/94 in 
so far as it is capable of distinguishing 
the goods or services of one undertak­
ing from those of another. However, it 
does not follow from the fact that a 
particular category of signs is in prin­
ciple capable of constituting a trade 
mark that all signs in that category 
necessarily possess distinctive char­
a c t e r , for the p u r p o s e s of 
Article 7(1)(b) of that regulation, with 
regard to particular goods. 
(see paras 19-20) 
II - 3888 
GLAVERBEL v OHLM (GLASS-SHEET SURFACE) 
2. Although Article 7(1 )(b) of Regulation 
No 40/94 on the Community trade 
mark, which provides that 'trade marks 
which are devoid of any distinctive 
character' are not to be registered, does 
not draw any distinction between dif­
ferent types of sign, the perception 
amongst the target market is not 
necessarily the same in the case of a 
sign composed of a design applied to 
the surface of goods as it is in the case 
of a word or figurative mark compris­
ing a sign that bears no relation to the 
appearance of the goods it identifies. 
Whilst the public is accustomed to 
perceiving word or device marks as 
instantly identifying the trade origin of 
the goods, the same is not necessarily 
true where the sign forms part of the 
appearance of the goods for which it is 
claimed. 
In addition, if the target market per­
ceives the sign as an indication of the 
trade origin of the goods or services, 
the fact that it serves several purposes 
at once has no bearing on its distinc­
tiveness. 
(see paras 23-24) 
3. Under Article 7(1 )(b) of Regulation 
No 40/94 on the Community trade 
mark, 'trade marks which are devoid of 
any distinctive character' are not to be 
registered. With regard to the regis­
tration for goods and services in 
Classes 11, 19 and 21 of the Nice 
Agreement concerning the Inter­
national Classification of Goods and 
Services for the Purposes of the Regis­
tration of Marks, of a design which 
entails applying countless tiny strokes 
to the surface of a plate of glass, no 
matter what its surface area, it follows 
from the foregoing considerations that 
the sign in question is devoid of any 
distinctive character for the purposes of 
Article 7(1 )(b). 
The sign claimed will not enable the 
consumer to recognise the sign as 
distinctive when he comes to make a 
choice on the occasion of a subsequent 
acquisition of the goods in question 
because it forms part of the appearance 
of the product itself and does not 
exhibit any particular feature to attract 
a consumer's instant attention as an 
indication of the trade origin of the 
product. Its complexity and fanciful-
ness are attributable to the ornamental 
and decorative nature of the design's 
finish, rather than indicating the trade 
origin of the goods, just as the impres­
sion conveyed by the design, which is 
not fixed, is not a particular aspect that 
is memorable to the consumer. 
(see paras 28-31, 37) 
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SUMMARY — CASE T-36/01 
4. The Community trade mark regime is 
an autonomous system and it applies 
independently of any national system. 
Accordingly, whether or not a sign is 
registrable as a Community trade mark 
must be assessed by reference to the 
relevant Community legislation only, 
so that neither the Office for Harmon­
isation in the Internal Market (Trade 
Marks and Designs) nor the Commu­
nity Court are bound by decisions in 
other Member States finding the same 
sign to be registrable as a trade mark. 
(see para. 34) 
5. The basis for decisions of the Boards of 
Appeal of the Office for Harmon­
isation in the Internal Market (Trade 
Marks and Designs) on the registration 
of signs as Community trade marks is 
Regulation No 40/94. The legality of 
decisions of the Boards of Appeal must 
therefore be assessed purely by refer­
ence to that regulation, as interpreted 
by the Community Court, not to the 
practice of the Boards in earlier cases. 
(see para. 35) 
6. Under Article 62(1) of Regulation 
No 40/94 on the Community trade 
mark, the Boards of Appeal of the 
Office for Harmonisation in the Inter­
nal Market (Trade Marks and Designs) 
are, where they find that the examiner 
has made an error of assessment, 
entitled either to exercise any power 
within the examiner's competence or to 
remit the case to him for further 
prosecution. 
It follows that, if it chooses not to remit 
a case to the examiner, the Board of 
Appeal enjoys the same powers, and is 
bound by the same obligations, as the 
examiner, including the obligation not 
to refuse an application unless the 
applicant has first had an opportunity 
of presenting its observations in 
accordance with Articles 38(3) and 73 
of Regulation No 40/94. 
(see paras 46-47) 
II - 3890