Order — ECLI:EU:C:2009:745
Date: 2009-12-02
Language of the case: German
Court formation: Eighth Chamber
Based on: Treaty establishing the European Economic Community (1957)
Subject matter: Trade marks;Intellectual, industrial and commercial property
Concepts: Appeals;Acquisition of distinctive character through use
Procedure: Action for annulment;Appeal - unfounded;Appeal - inadmissible
Origin: Austria

Summary of the Order 1. Appeals – Grounds – Incorrect assessment of the facts and evidence – Inadmissibility – Review by the Court of Justice of the assessment of the facts and evidence – Possible only where the clear sense of the evidence has been distorted (Art. 225 EC; Statute of the Court of Justice, Art. 58, first para.) 2. Community trade mark – Definition and acquisition of the Community trade mark – Absolute grounds for refusal – Trade marks which consist exclusively of signs or indications to designate a product or service’s characteristics – Exception – Distinctive character acquired through use (Council Regulation No 40/94, Art. 7(1)(c), (2) and (3)) 3. Community trade mark – Surrender, revocation and invalidity – Causes of absolute nullity – Exception – Distinctive character acquired through use (Council Regulation No 40/94, Art. 51(1) and (2)) 1. It is clear from Article 225 EC and the first paragraph of Article 58 of the Statute of the Court of Justice that an appeal lies on points of law only. The General Court therefore has sole jurisdiction to find and assess the relevant facts and evidence. The appraisal of the facts and evidence thus does not constitute, save where they have been distorted, a point of law subject to review by the Court. (see para. 49) 2. According to Article 7(1)(c) of Regulation No 40/94 on the Community trade mark, read in combination with Article 7(2), registration of a trade mark must be refused if it consists exclusively of signs or indications which give it a descriptive character in part of the Community. In addition, under Article 7(3) of the same regulation, Article 7(1)(c) thereof does not apply if the trade mark has become distinctive in relation to the goods or services for which registration is requested in consequence of the use which has been made of it. It follows that a mark can be registered under Article 7(3) of that regulation only if evidence is provided that it has acquired, through the use which has been made of it, distinctive character in the part of the Community in which it had such character, ab initio, for the purposes of Article 7(1)(c). (see paras 58-60) 3. The respective scopes of Article 51(1) and (2) of Regulation No 40/94 on the Community trade mark are different. Thus, Article 51(1) does not permit an action for the invalidation of a trade mark which has become distinctive in consequence of the use which has been made of it prior to the filing of the application for its registration since such a trade mark was not registered in breach of the provisions of Article 7 of the regulation. Article 51(2), on the other hand, merely refers to trade marks which have acquired distinctive character through the use which has been made of them after registration even though registration was made in breach of Article 7(1)(b) to (d) of the regulation and should therefore have been invalidated on that ground. (see para. 91)