Opinion of the Advocate General — ECLI:EU:C:2004:151
Date: 2004-03-16
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;Appeal - unfounded;Appeal - inadmissible

Summary of the Judgment 1. Community trade mark – Definition and acquisition of the Community trade mark – Absolute grounds for refusal – Trade marks devoid of any distinctive character – Three-dimensional trade marks consisting of the shape of the product – Distinctive character – Criteria for assessment – Shape in question being a ‘variant’ of a common shape of the type of products concerned – Not sufficient to establish the distinctiveness of the trade mark (Council Regulation No 40/94, Art. 7(1)(b)) 2. Community trade mark – Definition and acquisition of the Community trade mark – Absolute grounds for refusal – Trade marks devoid of any distinctive character – Examination of the sign by the competent authority – Taking into consideration of all the relevant facts and circumstances, including the actual perception of the sign by consumers and to the exclusion of the perception arising from the use of the sign (Council Regulation No 40/94, Art. 7(1)(b) and (3)) 3. Community trade mark – Definition and acquisition of the Community trade mark – Absolute grounds for refusal – Trade marks devoid of any distinctive character – Three-dimensional trade marks consisting of the shape of the product – High-quality design – Not sufficient to establish the distinctiveness of the trade mark (Council Regulation No 40/94, Art. 7(1)(b)) 1. The criteria for assessing the distinctive character, within the meaning of Article 7(1)(b) of Regulation No 40/94 on the Community trade mark, of three-dimensional marks consisting of the shape of the product itself are no different from those applicable to other categories of trade mark. None the less, for the purpose of applying those criteria, the relevant public’s perception is not necessarily the same in the case of a three-dimensional mark consisting of the shape of the product itself as it is in the case of a word or figurative mark consisting of a sign which is independent from the appearance of the products it denotes. Average consumers are not in the habit of making assumptions about the origin of products on the basis of their shape or the shape of their packaging in the absence of any graphic or word element and it could therefore prove more difficult to establish distinctiveness in relation to such a three-dimensional mark than in relation to a word or figurative mark In those circumstances, the more closely the shape for which registration is sought resembles the shape most likely to be taken by the product in question, the greater the likelihood of the shape being devoid of any distinctive character. Only a mark which departs significantly from the norm or customs of the sector and thereby fulfils its essential function of indicating origin, is not devoid of any distinctive character for the purposes of that provision. Therefore, where a three-dimensional mark is constituted by the shape of the product for which registration is sought, the mere fact that that shape is a ‘variant’ of a common shape of that type of product is not sufficient to establish that the mark is not devoid of any distinctive character. It must always be determined whether such a mark permits the average consumer of that product, who is reasonably well informed and reasonably observant and circumspect, to distinguish the product concerned from those of other undertakings without conducting an analytical examination and without paying particular attention. (see paras 30-32) 2. In order to assess whether or not a mark is devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 40/94 on the Community trade mark, the Office for Harmonisation in the Internal Market (Trade Marks and Designs) or, where a challenge is brought, the Court of First Instance, must have regard to all the relevant facts and circumstances. In that regard, even if that assessment must be carried out in relation to the presumed expectations of an average consumer of the goods or services in respect of which registration is sought, who is reasonably well informed and reasonably observant and circumspect, the possibility remains that evidence based on the actual perception of the mark by consumers may, in certain cases, provide guidance to the Office or, where a challenge is brought, the Court of First Instance. However, in order to contribute to the assessment of the distinctiveness of a mark, that evidence must show that consumers did not need to become accustomed to the mark through the use made of it, but that it immediately enabled them to distinguish the goods or services bearing the mark from the goods or services of competing undertakings. Article 7(3) of Regulation No 40/94 would be redundant if a mark fell to be registered in accordance with Article 7(1)(b) by reason of its having become distinctive in consequence of the use made of it. (see paras 48-50) 3. The fact that goods benefit from a high quality of design does not necessarily mean that a mark consisting of the three-dimensional shape of those goods enables ab initio those goods to be distinguished from those of other undertakings for the purposes of Article 7(1)(b) of Regulation No 40/94 on the Community trade mark. (see para. 68)