Opinion of the Advocate General — ECLI:EU:C:2006:203
Date: 2006-03-23
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
Origin: Germany

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 (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 (Council Regulation No 40/94, Art. 7(3)) 3. Community trade mark – Definition and acquisition of the Community trade mark – Absolute grounds for refusal – Trade marks devoid of any distinctive character (Council Regulation No 40/94, Art. 7(3)) 1. The criteria for assessing the distinctive character, for the purposes of Article 7(1)(b) of Regulation No 40/94 on the Community trade mark, of three-dimensional marks consisting of the appearance 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, which consists of the appearance of the product itself, as it is in the case of a word or figurative mark, which consists of a sign unrelated to 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, 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. (see paras 24-26) 2. A mark may acquire distinctive character, for the purposes of Article 7(3) of Regulation No 40/94 on the Community trade mark, in consequence of use of that mark in conjunction with a registered trade mark. Therefore, a three-dimensional mark may in certain circumstances acquire distinctive character through use even if it is used in conjunction with a word mark or a figurative mark. However, a three-dimensional mark is essentially different from its two-dimensional graphic representation. It follows that where, as in the present case, a picture of the product features on the packaging, consumers do not actually see the mark itself, being the mark consisting of the three-dimensional form of the product. It is possible, however, that the two-dimensional representation of such a mark may in certain circumstances facilitate awareness of the mark by the relevant public where it enables the essential elements of the three-dimensional shape of the product to be perceived. Furthermore, in regard to acquisition of distinctive character through use, the identification by the relevant class of persons of the product or service as originating from a given undertaking must be as a result of the use of the mark as a trade mark. Therefore, not every use of the mark, a fortiori use of a two-dimensional representation of a three-dimensional mark, amounts necessarily to use as a mark. (see paras 57-62) 3. In order to assess whether a mark has acquired distinctive character through use, for the purposes of Article 7(3) of Regulation No 40/94 on the Community trade mark, all the circumstances in which the relevant public may see that mark must be borne in mind. That means not only when the decision to purchase is made but also before that point, for example as a result of advertising, and when the product is consumed. None the less, it is when making his choice between different products in the category concerned that the average consumer exhibits the highest level of attention so that the question whether or not the average consumer sees the mark at the time of purchase is of particular importance for determining whether the mark has acquired distinctive character through use. (see paras 71-72)