Opinion of the Advocate General — ECLI:EU:C:2004:143
Date: 2004-03-11
Language of the case: German
Based on: Treaty establishing the European Economic Community (1957)
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment - successful;Appeal - successful
Origin: Germany

summary: marks contrary to public policy or accepted morality; deceptive marks; marks making unauthorised use of emblems, badges or hallmarks; and geographical indications for wines or spirits not having that origin. 5 – Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended. 6 – Paragraphs 18 to 21 of the judgment under appeal. 7 – Ibid., paragraphs 42 to 44. 8 – Ibid., paragraphs 24 to 28. 9 – Ibid., paragraphs 34 to 57. 10 – Ibid., paragraph 61, citing Case 188/83 Witte v Parliament [1984] ECR 3465, paragraph 15 of the judgment, and Case 134/84 Williams v Court of Auditors [1985] ECR 2225, paragraph 14. 11 – Joined Cases C-108/97 and C-109/97 [1999] ECR I-2779, in particular at paragraph 25 of the judgment, with regard to Article 3(1)(c) of the Trade Marks Directive (First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks, OJ 1989 L 40, p. 1), which is identical in wording to Article 7(1)(c) of the Trade Mark Regulation but which concerns national, rather than Community, trade marks. 12 – See Case C-39/97 Canon [1998] ECR I-5507, paragraph 28 of the judgment; Case C-10/89 CNL-SUCAL v HAG GF (HAG II) [1990] ECR I-3711, paragraph 13; Case C-299/99 Philips v Remington [2002] ECR I-5475, paragraph 30. 13 – Cited in note 12, paragraph 21 of the judgment. 14 – See for example Philips, cited in note 12, paragraph 77 of the judgment. 15 – Cited in note 11, paragraph 25 of the judgment. 16 – Joined Cases C-53/01 to C-55/01 Linde and Others [2003] ECR I-3161, paragraph 73 of the judgment and paragraph 2 of the operative part. 17 – Case C-191/01 P OHIM v Wrigley, judgment of 23 October 2003, at paragraph 31. 18 – With regard to Article 3(1)(e) of the Directive (identical to Article 7(1)(e) of the Regulation), see Philips, cited in note 12, paragraphs 78 to 80 of the judgment. The aims pursued by subparagraphs (f) to (j) are different but clear from their content: see note 4. 19 – Case C-104/01 Libertel Groep [2003] ECR I-3793, judgment delivered after the appeal and response were lodged in the present case; see in particular, in the present context, paragraphs 44 to 60. 20 – Paragraph 47 of the judgment. See also paragraph 81 of Advocate General Ruiz-Jarabo’s Opinion of 6 November 2003 in Joined Cases C-456/01 P and C-457/01 P Henkel v OHIM, Joined Cases C-468/01 P to C-472/01 P Procter & Gamble v OHIM and Joined Cases C-473/01 P and C-474/01 P Procter & Gamble v OHIM (the ‘Multicoloured detergent tablets’ cases). 21 – Case C-383/99 P Procter & Gamble v OHIM [2001] ECR I-6251, paragraphs 40 and 42 to 45. 22 – .Baby-Dry, paragraph 37 of the judgment. 23 – See, for example, with regard to various types of assessment, Case C-251/95 SABEL [1997] ECR I-6191, paragraph 23 of the judgment; Baby-Dry, paragraph 40; Case C-291/00 LTJ Diffusion [2003] ECR I-2799, paragraph 52. 24 – See, for example, Case C-265/00 Campina Melkunie, judgment of 12 February 2004, at paragraphs 18 and 19. 25 – Paragraph 46 of the judgment under appeal. 26 – These are cases where the number is used as an identification, as opposed to indications of size, for example, where it is clearly descriptive. 27 – But see William Cornish and David Llewelyn, Intellectual Property (5th edition 2003), at paragraph 17-32, p. 663, and the case-law cited there. 28 – Paragraph 61 of the judgment under appeal. 29 – Of 26 March 1996, paragraph 2.2. 30 – In a rather different field, one might compare ‘Pastis 51’ and ‘VAT 69’ as clearly distinctive brand names comprising only a descriptive element and a distinctive number. 31 – The question here, it must be remembered, concerns one of the absolute grounds for refusal under Article 7 of the Regulation; in this context, considerations which might be relevant in the context of an opposition or an infringement action based on a relative ground of invalidity such as the prior existence of a similar mark for similar products do not necessarily come into play.