Opinion of the Advocate General — ECLI:EU:C:2003:602
Date: 2003-11-06
Based on: Treaty establishing the European Economic Community (1957)
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment;Appeal - unfounded
Origin: Germany;Provisional data;United States

summary in nature. Nor is that approach appropriate from the point of view of judicial policy, since in disputes in which Article 12 is relied on, the proprietor of the trade mark will always enjoy an advantage, owing to the general reluctance to question official records and to the difficulty inherent in distinguishing what is descriptive from what is not. (9) 52. The Court of Justice clearly endorsed that approach in its judgment in Libertel (10) when it found that Article 6 of the Trade Mark Directive, (11) whose content is the same as that of Article 12 of the Regulation, concerns the limits on the effects of a Community trade mark once it has been registered. Furthermore, it stated that the consequence of a minimal review of the grounds for refusal at the time when the application for registration is considered, on the basis that the risk that certain operators might appropriate certain signs which, owing to their very nature, ought to remain available, is neutralised by the limitation mentioned above, is to withdraw the assessment of the grounds for refusal from the competent authority at the time when the mark is registered in order to transfer it to the courts with responsibility for ensuring that the rights conferred by the trade mark can be exercised in practice. That approach is incompatible with the scheme of the Directive, which is founded on review prior to registration, not on an ex post facto review. There is nothing in the Directive to suggest that Article 6 leads to such a conclusion. On the contrary, the number and the detailed nature of the obstacles to registration set out in Articles 2 and 3 of the Directive, and the wide range of remedies available in the event of refusal, indicate that the examination carried out at the time when registration is applied for must not be brief, but must be stringent and thorough in order to prevent trade marks from being improperly registered. (12) 53. Therefore, the Court of First Instance did not make an error in law in its interpretation of Article 7(1)(b) of the Regulation. 54. Procter & Gamble does not agree with such a solution and maintains that the possibility that consumers may generally get into the habit of identifying a product from its colours is a matter for Article 7(1)(b) of Regulation No 40/94 and not for Article 7(3) thereof. 55. In any event, this ground of appeal is ineffective, since it purports to challenge an aspect of the Court of First Instance’s reasoning which has no impact on the outcome of the case and fails to challenge the proposition, which is clearly correct, that the fact that consumers may get into the habit of recognising the product from its colours is not on its own sufficient to exclude the ground for refusal in Article 7(1)(b). 56. Procter & Gamble also claims that the Court of First Instance was wrong to hold that the estimate of the number of tablets on the market with the same features is irrelevant when the product is found to be incapable of indicating origin. On the contrary, if at the material time no similar tablets are available on the market, the shapes for which registration is sought would be appreciably different and would thus possess distinctive character. 57. However, the disputed finding of the Court of First Instance is correct: first, what is decisive is not the number of products on the market but the way in which the average consumer perceives them; second, nor is the number of products on the market capable of counteracting, for example, the descriptive nature of their appearance for the purposes of Article 7(1)(c) of the Regulation. 58. For those reasons, these grounds of appeal must be rejected. 3. Grounds of appeal relating to the definition of the consumer’s level of attention 59. The contested judgments upheld the Board of Appeal’s finding that the level of attention given by the average consumer to the shape and pattern of washing machine and dishwasher tablets, being everyday consumer goods, is not high. 60. Henkel accepts that the average consumer’s degree of attentiveness varies according to the category of goods concerned. However, it disagrees with the Court of First Instance’s analysis, since it may be presumed, specifically in relation to everyday consumer goods, that the consumer has a particular interest, not only in knowing about the category of product, but also in the product itself. Manufacturers advertise in such a way as to highlight the qualities of detergents. For that reason – in Henkel’s submission – the average consumer, who is reasonably well informed and reasonably observant and circumspect, associates particular requirements as to quality with certain products, seeking to distinguish them by their appearance. 61. Procter & Gamble submits, first, that, at the time when the application for registration was filed, dishwasher tablets, and even more so washing tablets, were not everyday consumer goods. At that time those goods were still at the high-quality end of the market and, consequently, the degree of attention given by the average consumer of those goods to the get-up was high; second, the appellant does not believe that the attention paid at the time of purchasing a product for everyday consumer use is necessarily low; rather, the everyday use of such goods continually attracts the consumer’s attention to their get-up and provokes a high degree of attention. 62. Although definition of the person by reference to whom the distinctive character of a sign is assessed is a matter of law, the precise way in which it is assumed that a given category of products is perceived or the precise qualification warranted by the products, are matters of fact, which may not be reviewed on appeal. Therefore, the finding made in this respect by the Court of First Instance cannot be reexamined. Even on the assumption that the assessment in question was of a legal nature, the assertion that, in relation to everyday consumer goods, the average consumer’s level of attentiveness is lower than it is in relation to luxury goods or simply to goods of higher value or goods which are less commonly used, seems to me the correct inference to be drawn from the proposition that as regards the relevant public’s perception of the trade mark, the attention of the average consumer varies according to the category of products or services in question. (13) 63. In addition, for Procter & Gamble, the time when the product is purchased is not the only relevant time for the purposes of assessing a sign’s distinctive character, since, given that the products are sold in packaging which does not correspond to their shape, the public has had a chance to become familiar with a particular get-up as a result of advertising campaigns or by virtue of using the tablets in question. 64. The appellant raises a question here which, although interesting, was not addressed before the Court of First Instance and therefore cannot be used to challenge the contested judgments. 65. Therefore, the grounds of appeal relating to the consumer’s degree of attention must be rejected. 4. Grounds of appeal relating to actual distinctive character 66. Both appellants submit that the Court of First Instance, in finding that the marks applied for were composed of an obvious arrangement of features, applied an incorrect test of their distinctive character. For Henkel it would have been preferable for the Court of First Instance to confine itself to ascertaining whether those features were different from the typical ones or whether they were necessary for technical reasons. In Procter & Gamble’s submission, the Court of First Instance should have asked whether the shape of the tablets differed perceptibly from the usual get-up of such detergents at the material time. 67. In Henkel’s submission, the fact that the sign takes the form of a basic geometric shape is of no significance, provided that the shape is unusual for the product to which it relates. 68. To my mind, the test used by the Court of First Instance is not only correct, but is also more appropriate, than the test proposed by the appellants. When the signs for which registration is sought are compared, not with those already current, but with a paradigm composed of features which spring to mind if the shape of the product is imagined, the test performed, although based on objective criteria, does not lean so heavily on the vagaries of the market. 69. The fact that, for the purposes of the test referred to, a no more rigorous standard is used than that applied in relation to other signs does not mean that the method of assessing distinctive character cannot be adapted to the particular features of this category of registrable signs. The consumer’s ability to distinguish the signs from the product of which they are an intrinsic part, as well as from other similar signs, only emerges, by definition, when the product is placed on the market. For that reason, the standard advocated by the appellants, which consists in deeming those unusual signs distinguishable, would give the more assiduous operators a disproportionate advantage, since they would be able to register in their own name the shapes which are easier to manufacture or more readily marketable. 70. For the purpose of guarding against that risk, but also for the purpose of promoting an assessment of actual distinctive character, the method adopted in these cases by the Board of Appeal and endorsed by the contested judgments, which defined it in greater detail, appears to be appropriate. I repeat that the preferable course is to assess such hypotheses under Article 7(1)(c) of the Regulation: thus the Examiner would ascertain whether the get-up of the sign applied for essentially tallies with the average consumer’s idea of the product. If so, he would refuse to register it on the basis of subparagraph (c), since the sign would amount to no more than the representation of a graphic description of the product. 71. Assessment in accordance with Article 7(1)(c) would also have the advantage of removing all doubt as to whether the need to preserve availability may be invoked, which would allow the Examiner to consider factors pertaining to the future when assessing whether a shape is eligible to be a trade mark. It is not certain that the need to preserve availability can be raised under Article 7(1)(b) of the Regulation. 72. The appellants also submit that the public perceives the arrangement of colours as an individual feature of the get-up of a given product. As to the use of a specific colour, such as red or green, Henkel maintains that it is significant that, if one colour is used exclusively for the tablets concerned, they may be associated with the undertaking of origin. 73. Procter & Gamble adds that the Court of First Instance should have indicated whether, apart from shape and colour, the slightly rounded edges of the tablets were capable of conferring sufficient distinctive character on them. 74. It is apparent that the foregoing submissions seek to challenge the assessment made by the Court of First Instance of the material components of the signs. In an exercise of that kind, the lower court has absolute discretion to reach its own decisions on matters of fact and therefore the exercise is not amenable to review on appeal. 75. I am conscious of the fact that in the legal traditions of the Member States, there are certain discrepancies as to the nature of the assessment of the material components of a trade mark. For the purposes of the doctrine of objective normative interpretation, it is a matter of law, inasmuch as the starting point of any analysis does not consist of facts which have been proven in the course of the procedure but of an objectivised ideal reference-point. To my mind, adopting that approach in the sphere of trade marks is not conducive to the effective administration of justice, since it negates the exceptional and specific nature of a review on appeal: first, it extends the scope for appeal to virtually all disputes in which a sign is held not to have distinctive character; second, it requires the Court of Justice to deliver a judgment which is comparable in all regards to that already given by the three lower authorities. 5. Ground of appeal relating to application of the need to preserve availability 76. Henkel submits that the Court of First Instance included in its analysis considerations relating to the so-called ‘need to preserve availability’. However, in Henkel’s view, the Windsurfing Chiemsee (14) judgment provides authority for the application of that principle only in respect of Article 7(1)(c) of the Regulation, in connection with the descriptive indications inherent in a sign. However, in the case of the tablets at issue, neither the colours nor the geometrical shapes can be deemed descriptive of the designated product. 77. In any event, Henkel maintains that registration as a trade mark of the combination of the shape and colours of the detergent tablets concerned is not precluded by any need to preserve availability. First, the shape is freely chosen by the manufacturer, subject to certain technical requirements. Second, the consumer does not perceive the colours as being dictated by a technical requirement but as the free and imaginative expression of the product’s individuality. Hence, the combination of those features is not at variance with any need to preserve availability. Henkel invokes in that regard the judgment in Procter & Gamble v OHIM(Baby-dry). (15) 78. As I pointed out above, it is by no means certain that considerations of general interest militating in favour of denying registration to certain signs so that they may remain fully available to all operators (the need to preserve availability) may be taken into account for the purposes of Article 7(1)(b) of the Regulation. The purpose of the absolute ground for refusal in that provision is to prohibit the registration of signs which are devoid of any real distinctive character, that is to say, those signs which the average consumer, who is reasonably well informed and reasonably observant and circumspect, cannot identify as reliably indicating the commercial origin of the product. It is, of course, in the general interest to prevent certain operators from appropriating to themselves three-dimensional shapes which are useful from an aesthetic or technical point of view, or from monopolising certain signs apt to describe the product per se, its actual or supposed qualities and other characteristics, such as where it originates from. Subparagraphs (c) and (e) of Article 7(1) of the Regulation deal with those concerns. 79. It is also appropriate to consider the similar general interest in keeping available, for use by all, signs which are customary in the current language or in the bona fide and established practices of the trade, which – under subparagraph (d) – may not be registered. 80. However, it does not seem that extensive protection should be afforded to signs which, without being descriptive, are for other reasons devoid of any specific distinctive character. I do not believe that there is any general interest in maintaining in the public domain signs which are incapable of identifying the commercial origin of the goods or services which they designate. Each of the grounds for refusing registration must be analysed in the light of the general interest on which it is based. (16) 81. In its judgment in Libertel, the Court of Justice accepted, in the context of Article 3(1)(b) of the Directive, that the registration as trade marks of colours per se, not spatially delimited, may mean that a small number of proprietors would exhaust the entire range of the colours available. Such a monopoly would be incompatible with a system of undistorted competition, since it would give rise to an unjustified competitive advantage. Nor would it be conducive to economic development or the fostering of the spirit of enterprise for established traders to be able to register the entire spectrum of colours for their own benefit, to the detriment of new traders. (17) Those considerations – based, as is recognised in the judgment itself, on the fact that there are a limited number of colours which an average consumer can in practice identify – do not appear to be transferable to the rules relating to trade marks consisting of the shape of the product. (18) 82. Despite that, Henkel’s complaint cannot be regarded as founded. I agree that, strictly speaking, it may be anomalous to mention the need to preserve availability in the context of Article 7(1)(b) of the Regulation, one point on which I disagree to some extent with the assertion in the contested judgments that ‘the absolute grounds for refusal set out in Article 7(1)(b) to (e) of Regulation No 40/94 address the concern of the Community legislature to prevent the grant to one operator alone of exclusive rights which could hinder competition on the market for the goods or services concerned’. (19) However, I do not accept that the Court of First Instance employed this criterion improperly in its judgments. Rather, in using the notion of an obvious shape, it assessed distinctive character by reference to an ideal paradigmatic concept of the product or, in other words, to how it instinctively comes to mind, instead of by reference to products already available on the market. 83. That approach is, as I have explained, particularly pertinent when the eligibility for registration of three-dimensional signs consisting of the shape of the product is to be assessed. In such cases, there is no remote point of comparison so long as the product does not exist. 84. Nor is it less reliable or more subjective than, for example, the reference to the average consumer, whose supposed perception is deemed by law to be the yardstick for the Court of Justice. (20) Finally, when it is properly executed, it is in fact objective. In the present case, it is significant that the appellants, who claim that the shapes of the washing tablets were not customary at the time when the application was filed, accept that they are now. That is perhaps the best proof that the test carried out was the right one. 85. Therefore, the last ground of appeal cannot succeed either. Costs 86. Under Article 69(2) of the Rules of Procedure, which applies to appeal proceedings pursuant to Article 118 thereof, the unsuccessful party is to be ordered to pay the costs. Consequently, if, as I propose, all the grounds of appeal put forward by the appellants in the various cases are rejected, the appellants must be ordered to pay the costs of the proceedings. Conclusion 87. Since I take the view that none of the grounds of appeal advanced is capable of having any effect on the legality of the contested judgments, I propose that the Court of Justice dismiss all these appeals and consequently order the appellants to pay the costs. 1 – Original language: Spanish. 2 – Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended by Council Regulation (EC) No 3288/94 of 22 December 1994, implementing the agreements concluded in the framework of the Uruguay Round (OJ 1994 L 349, p. 83). 3 – Nice Agreement concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks of 15 June 1957, as revised and amended. 4 – The judgments in Henkel v OHIM, in Case T-337/99 (ECR II-2597) and, in summary form, in Case T-335/99 (ECR II-2581) and Case T-336/99 (ECR II-2589). 5 – As set out in the judgment in Case T-118/00 Procter & Gamble v OHIM [2001] ECR II-2731, but applicable mutatis mutandis to the other cases. 6 – See points 17 and 18 above. 7 – Paragraphs 73 and 74. 8 – That was the approach taken by the Bundesgerichtshof in the cases which came before the Court of Justice as Joined Cases C-53/01 to C-55/01 Linde and Others [2003] ECR I-3161. 9 – See points 85 and 86 of my Opinion in Case C-104/00 P DKV v OHIM (Companyline) [2002] ECR I-7561. 10 – Case C-104/01 Libertel [2003] ECR I-3793. 11 – First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1). 12 – Paragraphs 58 and 59. 13 – See the judgment of the Court of Justice in Case C-342/97 Lloyd Schuhfabrik Meyer [1999] ECR I-3819, paragraph 26. 14 – Joined Cases C-108/97 and C-109/97 Windsurfing Chiemsee [1999] ECR I-2779. 15 – Case C-383/99 [2001] ECR I-6251. 16 – See Case C-299/99 Philips [2002] ECR I-5475, paragraph 77. 17 – Libertel, cited in point 52 above, paragraph 54. 18 – At the hearing, the Office’s lawyer put forward an interpretation capable of implying requirements of availability into Article 7(1)(b). It entails taking the view that signs such as basic shapes or colours do not attain a minimum degree of distinctiveness and must therefore remain available to all. However, as the lawyer himself admitted, that argument entails reversing the variables in the equation. 19 – See point 35 above. 20 – Given that factual data – obtained, for example, from expert reports or surveys of public opinion – although legitimate (see the judgment in Windsurfing Chiemsee, cited in paragraph 76 above, paragraph 53), may only be used as guidance (see the judgment in Case C-210/96 Gut Springenheide and Tusky [1998] ECR I-4657, paragraphs 31 to 36).