Judgment — ECLI:EU:T:1999:145
Date: 1999-07-08
Language of the case: French
Court formation: Second Chamber
Based on: Treaty establishing the European Economic Community (1957)
Subject matter: Trade marks;Intellectual, industrial and commercial property
Concepts: Signs of which a trade mark may consist;Word marks;Actions before the Community Courts;Appeals before the Boards of Appeal
Procedure: Action for annulment - successful

Summary of the Judgment
1. Community trade mark — Definition and acquisition of the Community trade mark —
Signs capable of constituting a trade mark — Requirement — Distinctive character —
To be assessed in relation to the goods or services in respect of which registration is
applied for
(Council Regulation No 40/94, Art. 4)
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SUMMARY— CASE T-163/98
2. Community trade mark —Definition and acquisition of the Community trade mark —
Absolute grounds for refusing registration — Marks composed exclusively of signs or
indications which may serve to designate the characteristics of a product — 'BABY-
DRY'
(Council Regulation No 49/94, Art. 7(l)(c))
3. Community trade mark — Appeals procedure — Appeal, against a decision of the
examiner, remitted to a Board of Appeal •—• Continuity in terms of their functions
between the Board of Appeal and the examiner — Obligations incumbent on Boards of
Appeal — Scope
(Council Regulation No 40/94, Arts 61(2) and 62(1))
4. Community trade mark — Appeals procedure — Appeals before the Community
judicature — jurisdiction of the Court of First Instance — Whether it may determine
claims the merits of which have not been considered by OHIM •— Excluded
5. Community trade mark — Appeals procedure •— Appeals before the Community
judicature — jurisdiction of the Court of First Instance — Whether it may issue
directions to OHIM •—• Excluded
(Council Regulation No 40/94, Art. 63(6))
1. Under Article 4 of Regulation
No 40/94 on the Community trade
mark, the decisive factor if a sign
capable of being represented graphi­
cally is to be eligible for registration as
a Community trade mark is its capacity
to distinguish the goods of one under­
taking from those of another. Conse­
quently, the distinctive character of a
sign can be assessed only in relation to
the goods or services in respect of
which its registration is applied for.
2. Under Article 7(l)(c) of Regulation
No 40/94 on the Community trade
mark, 'trade marks which consist
exclusively of signs or indications
which may serve, in trade, to designate
the kind, quality, quantity, intended
purpose, value, geographical origin or
the time of production of the goods or
of rendering of the service, or other
characteristics of the goods or service'
are not to be registered. It was thus the
intention of the legislature that such
signs should, by their very nature, be
regarded as incapable of distinguishing
the goods of one undertaking from
those of another.
The sign 'BABY-DRY' — registration
of which was sought in respect of
'disposable diapers made out of paper
or cellulose' and 'diapers made out of
textile' — is not capable of constituting
a Community trade mark, being com­
posed exclusively of words which may
serve in trade to designate the intended
purpose of the goods.
3. The Office for Harmonisation in the
Internal Market (Trade Marks and
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PROCTER & GAMBLE V OHIM (BABY-DRY)
Designs) was established by Regulation
No 40/94 to register Community trade
marks which, being valid throughout
the territory of the Member States, are
an important instrument for the com­
pletion of the internal market. The
Boards of Appeal, which form part of
the Office, also contribute, within the
limits set by the regulation, to the
application of that instrument. In that
sense, there is continuity in terms of
their functions between the Boards of
Appeal and the examiner whose
responsibility it is to take the decisions
concerning applications for registra­
tion.
It is clear from the scheme of Regula­
tion No 40/94, as well as from Arti­
cles 61(2) and 62(1) thereof— con­
cerning the examination of the appeal
and the ensuing decision — that it is
not open to a Board of Appeal, which
enjoys the same powers in determining
an appeal as the examiner, simply to
reject an applicant's arguments solely
on the ground that they were not raised
before the examiner. After considering
an appeal, the Board should either rule
on the substance of the issue or remit
the matter to the examiner.
4. In proceedings contesting a decision of
one of the Boards of Appeal of the
Office for Harmonisation in the Inter­
nal Market (Trade Marks and Designs)
refusing an application for registration
of a trade mark on one of the absolute
grounds for refusal set out in Arti­
cle 7(1)(b), (c) or (d) of Regulation
No 40/94, it is not for the Court to
determine an application pursuant to
Article 7(3) of the Regulation — seek­
ing to establish that a mark has become
distinctive in consequence of the use
made of it — where the merits of that
claim have not been considered by the
Office.
5. Where an action is brought before the
Community judicature contesting a
decision of one of the Boards of Appeal
of the Office for Harmonisation in the
Internal Market (Trade Marks and
Designs), the Office is required under
Article 63(6) of Regulation No 40/94
to take the measures necessary to
comply with the judgment of the Court
of Justice. Accordingly, the Court of
First Instance is not entitled to issue
directions to the Office.
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