Judgment — ECLI:EU:T:2002:43
Date: 2002-02-27
Language of the case: English
Court formation: Fourth Chamber
Based on: Treaty establishing the European Economic Community (1957)
Subject matter: Trade marks;Intellectual, industrial and commercial property
Concepts: Word marks;Actions before the Community Courts;Descriptive marks;General
Procedure: Action for annulment - successful

Summary of the Judgment 
1. Community trade mark — Appeals procedure — Appeals before the Community 
judicature — jurisdiction of the Court of First Instance — Alteration of a decision of 
the Office — Power to remit the case to the examiner 
(Council Regulation No 40/94, Arts 62(1), and 63(3) and (6)) 
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SUMMARY — CASE T-106/00 
2. Community trade mark — Definition and acquisition of the Community trade 
mark — Absolute grounds for refusal — Marks composed exclusively of signs or 
indications which may serve to designate the characteristics of a product — 
Objective — Need to leave a sign or indication free — Scope of the examination 
(Council Regulation No 40/94, Art. 7(1)(c)) 
3. Community trade mark — Definition and acquisition of the Community trade 
mark — Absolute grounds for refusal — Marks composed exclusively of signs or 
indications which may serve to designate the characteristics of a product — Appraisal 
of the descriptive character of the sign — Consideration only of goods covered as such 
in the application for registration 
(Council Regulation No 40/94, Art. 7(1)(c)) 
4. Community trade mark — Definition and acquisition of the Community trade 
mark — Application for registration of a sign for all goods within a category — 
Appraisal of the descriptive character of a sign relating to all the goods 
(Council Regulation No 40/94, Art. 7(1)(c)) 
5. Community trade mark — Definition and acquisition of a Community trade mark — 
Appraisal of the registrability of a sign — Only Community rules to be taken into 
account — Earlier registration of the trade mark in certain Member States or third 
countries — Decisions not binding on the Community judicature 
(Council Regulation No 40/94; Council Directive 89/104) 
6. Community trade mark — Definition and acquisition of the Community trade 
mark —· Absolute grounds for refusal — Marks composed exclusively of signs or 
indications which may serve to designate the characteristics of a product — Signs 
devoid of any distinctive character — 'STREAMSERVE' 
(Council Regulation No 40/94, Art. 7(1)(b), (c) and (2)) 
7. Community trade mark — Decisions of the Office — Legality — Examination by 
the Community judicature — Criteria — Application to a plea alleging breach of the 
principle of non-discrimination as a result of the decision-making practice of the Office 
1. Under Article 63(3) of Regulation 
No 40/94 on the Community trade 
mark the Court of First Instance has 
jurisdiction both to annul and to alter a 
decision of the Office for Harmon­
isation in the Internal Market (Trade 
Marks and Designs) and, under 
Article 63(6) of that regulation, the 
Office is required to take the measures 
necessary to comply with the judgment 
of the Court of First Instance. 
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STREAMSERVE v OHIM (STREAMSERVE) 
Although under Article 63(6) the Court 
of First Instance is not entitled to issue 
directions to the Office, by remitting a 
case to the examiner, the Court would 
not be imposing on the Office any 
obligation to take action or refrain 
from doing so and would not therefore 
be issuing directions to the Office. It 
follows that a claim that the case be 
remitted to the examiner is not inad­
missible under the abovementioned 
provisions. 
Moreover, remission of the case to the 
examiner may be ordered by the Board 
of Appeal under Article 62(1) of that 
regulation and therefore falls within 
the measures which may be taken by 
the Court of First Instance in the 
exercise of its power to amend 
decis ions , as provided for in 
Article 63(3) of Regulation No 40/94. 
(see paras 17-19) 
2. Article 7(1 )(c) of Regulation No 40/94 
on the Community trade mark, which 
prevents the signs or indications 
referred to in that provision from being 
reserved to one undertaking alone 
because they have been registered as a 
mark, pursues an aim which is in the 
public interest, namely that such signs 
or indications may be freely used by all. 
The application of that provision does 
not depend on there being a real, 
current or serious need to leave a sign 
or indication free, so that it is necessary 
only to consider, on the basis of the 
relevant meaning of the sign at issue, 
whether, from the viewpoint of the 
public addressed, there is a sufficiently 
direct and specific relationship between 
the sign and the goods for which 
registration is sought. 
(see paras 36, 39-40) 
3. When the descriptive character of a 
sign for the purposes of Article 7(1 )(c) 
of Regulation No 40/94 on Commu­
nity trade marks is appraised, only 
goods appearing as such in the appli­
cation for registration are taken into 
account. Conversely, goods which are 
mentioned as examples of goods falling 
within the category for which regis­
tration is sought must not be taken into 
account. 
(see para. 45) 
4. Where registration of a sign as a 
Community mark is applied for, with­
out any distinction being drawn, for a 
category of products in its entirety and 
that sign is not descriptive of all the 
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SUMMARY — CASE T-106/00 
products in that category, the ground 
for refusal referred to in Article 7(1)(c) 
of Regulation No 40/94 nevertheless 
applies to that sign for the whole 
category concerned. 
(see para. 46) 
5. The Community trade mark regime is 
an autonomous system with its own set 
of objectives and rules peculiar to it; it 
is self-sufficient and applies indepen­
dently of any national system. Con­
sequently, the registrability of a sign as 
a Community mark must be assessed 
by reference only to the relevant Com­
munity rules and therefore the Office 
for Harmonisation in the Internal 
Market (Trade Marks and Designs) 
and, if appropriate, the Community 
judicature are not bound by a decision 
given in a Member State, or indeed a 
third country, that the sign in question 
is registrable as a national mark. That 
is so even if such a decision was 
adopted under national legislation har­
monised with Directive 89/104 on 
trade marks or in a country belonging 
to the linguistic area in which the word 
sign in question originated. 
(see para. 47) 
6. Under Article 7(1)(c) of Regulation 
No 40/94 on the Community trade 
mark, registration is to be refused for 
'trade marks which consist exclusively 
of signs or indications which may 
serve, in trade, to designate the... 
intended purpose... of the goods or of 
rendering of the service, or other char­
acteristics of the goods or service'. 
Moreover, Article 7(2) of Regulation 
No 40/94 states that '[paragraph 1 
shall apply notwithstanding that the 
grounds of non-registrability obtain in 
only part of the Community'. 
As regards registration of the term 
STREAMSERVE for goods falling 
within the categories 'apparatus for 
recording, transmitting and reproduc­
ing of sounds and images', 'data pro­
cessing equipment including com­
puters, computer memories, viewing 
screens, keyboards, processors, printers 
and scanners', 'computer programs 
stored on tapes, disks, diskettes and 
other machine-readable media' and 
'listed computer programs', the tech­
nique of transferring digital data from 
a server so as to enable them to be 
processed as a steady and continuous 
stream involves, or indeed requires, the 
use of those goods, since that technique 
does not merely constitute a field in 
which those goods are applied but 
rather is one of their specific functions. 
Accordingly, for the relevant public to 
whom it is addressed, which comprises 
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STREAMSERVE v OHIM (STREAMSERVE) 
in this case average English-speaking 
consumers who use the internet and are 
interested in its audiovisual aspects, 
there is a sufficiently direct and specific 
r e l a t i o n s h i p b e t w e e n the t e r m 
STREAMSERVE and those goods, so 
that that term can serve, within the 
meaning of Article 7(1 )(c) of Regu­
lation No 40/94, to designate a char­
acteristic of those goods. 
As regards the registration of that same 
term for goods in the categories 'man­
uals' and 'publications', it has not been 
proved that the term STREAMSERVE 
designates the purpose or any other 
characteristic thereof. The abovemen-
tioned technique does not require or 
even involve the use of those goods; nor 
can it be alleged that the term in 
question is descriptive of those goods 
because the technique to which that 
term refers can also be used for the 
transfer of texts by electronic means. 
Moreover, so far as concerns the dis­
tinctive character, within the meaning 
of Art ic le 7(1)(b) of Regu la t ion 
N o 40/94, of the term STREAM-
SERVE for the goods in question, its 
absence has not been proved. 
(see paras 35, 38, 44, 49-50, 60) 
7. Decisions concerning registration of a 
sign as a Community mark which the 
Boards of Appeal of the Office for 
Harmonisation in the Internal Market 
(Trade Marks and Designs) are called 
on to take under Regulation No 40/94 
are adopted in the exercise of circum­
scribed powers and are not a matter of 
discretion. Accordingly, the legality of 
the decisions of Boards of Appeal must 
be assessed solely on the basis of that 
regulation, as interpreted by the Com­
munity judicature, and not on the basis 
of a previous decision-making practice 
of those boards. 
Where a plea has been put forward 
before the Community judicature alleg­
ing that a Board of Appeal has 
infringed the principle of non-discrimi­
nation by rejecting an appeal brought 
against the refusal of registration of a 
given sign, although it previously 
allowed registration of a comparable 
sign, two hypotheses exist. 
If, by accepting, in the previous case, 
the registrability of a sign as a Com­
munity mark, the Board of Appeal 
correctly applied the relevant provi­
sions of Regulation No 40/94 and, in a 
later case comparable to the previous 
one, the Board of Appeal adopted a 
contrary decision, the Community judi­
cature will be required to annul the 
latter decision because of infringement 
of the relevant provisions of Regulation 
No 40/94. In this first hypothesis, the 
plea alleging breach of the principle of 
non-discrimination must therefore fail. 
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SUMMARY — CASE T-106/00 
On the other hand, if, by accepting in 
the earlier case the registrability of a 
sign as a Community mark, the Board 
of Appeal erred in law and, in the later 
case, comparable to the previous one, 
the Board of Appeal adopted a 
contrary decision, the first decision 
cannot be successfully relied on to 
support an application for the annul­
ment of the latter decision, because 
observance of the principle of equal 
treatment must be reconciled with 
observance of the principle of legality 
according to which no person may rely, 
in support of his claim, on unlawful 
acts committed in favour of another. In 
the second hypothesis, the plea alleging 
breach of the principle of non-discrimi­
nation must therefore also fail. 
(see paras 66-67) 
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