Opinion of the Advocate General — ECLI:EU:C:2005:338
Date: 2005-06-02
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 - unfounded;Appeal - successful
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 – Compound mark – Taking into account the overall perception of the mark by the relevant public (Council Regulation No 40/94, Art. 7(1)(b)) 2. Appeal – Pleas in law – Incorrect assessment of the facts – Inadmissibility – Review by the Court of Justice of the assessment of the facts before the Court of First Instance – Excluded except in the case of distortion of the facts (Art. 225 EC; Statute of the Court of Justice, Art. 58, first para.) 3. Community trade mark – Decisions of the Office – Legality – Examination by the Community judicature – Criteria (Council Regulation No 40/94) 4. Community trade mark – Definition and acquisition of the Community trade mark – Absolute grounds for refusal – Separate examination of the different grounds for refusal – Interpretation of the grounds for refusal in the light of the general interest underlying each of them – Use of a relevant criterion in the context of Article 7(1)(c) of Regulation No 40/94 in the interpretation of subparagraph (b) of that provision – Inadmissibility (Council Regulation No 40/94, Art. 7(1)(b) and (c)) 5. Community trade mark – Definition and acquisition of the Community trade mark – Absolute grounds for refusal – Trade marks devoid of any distinctive character – Compound mark containing the abbreviation BioID (Council Regulation No 40/94, Art. 7(1)(b)) 1. When assessing the distinctive character of a mark within the meaning of Article 7(1)(b) of Regulation No 40/94 on the Community trade mark, and where a compound mark is concerned, any distinctive character may be assessed, in part, in respect of each of the terms or elements, taken separately, but that assessment must, in any event, be based on the overall perception of that trade mark by the relevant public and not on the presumption that elements individually devoid of distinctive character cannot, on being combined, present such character. The mere fact that each of those elements, considered separately, is devoid of distinctive character does not mean that their combination cannot present such character. (see para. 29) 2. 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 Court of First Instance thus has exclusive jurisdiction to find and appraise the relevant facts and to assess the evidence. The appraisal of those facts and the assessment of that evidence thus does not, save where they distort the evidence, constitute a point of law which is subject, as such, to review by the Court of Justice on appeal. (see paras 43, 53) 3. Decisions concerning registration of a sign as a Community trade mark which the Boards of Appeal are called on to take under Regulation No 40/94 on the Community trade mark are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of the decisions of Boards of Appeal must be assessed solely on the basis of that regulation, as interpreted by the Community judicature, and not on the basis of a previous decision-making practice of those boards. (see para. 47) 4. Each of the grounds for refusal to register listed in Article 7(1) of Regulation No 40/94 on the Community trade mark is independent of the others and calls for separate examination. Furthermore, the various grounds for refusal must be interpreted in the light of the general interest underlying each of them. The general interest taken into consideration when examining each of those grounds for refusal may, or even must, reflect different considerations, according to the ground for refusal in question. In that regard, the notion of general interest underlying Article 7(1)(b) of that regulation is, manifestly, indissociable from the essential function of a trade mark, which is to guarantee the identity of the origin of the marked product or service to the consumer or end-user by enabling him, without any possibility of confusion, to distinguish the product or service from others which have another origin. By contrast, the fact that it has been shown that the trade mark applied for is likely to be commonly used by the public or by competitors, which is a relevant factor under Article 7(1)(c), is not the yardstick by which Article 7(1)(b) must be interpreted. (see paras 59-60, 62) 5. The compound sign containing the abbreviation BioID and figurative elements, namely the typographical features of that abbreviation, and two graphic elements placed after the abbreviation BioID, namely a full stop and a sign ‘®’, whose registration as a Community trade mark is sought for goods and services in Classes 9, 38 and 42 of the Nice Agreement and, in particular, products whose use is required for the biometric identification of human beings and services provided by means of such identification or related to the development of systems for such identification, is devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 40/94 on the Community trade mark from the point of view of a public with experience in the sector of the goods and services concerned, who is reasonably well-informed and reasonably observant and circumspect. The abbreviation BioID, which is understood by the relevant public as being made up of the abbreviation of an adjective ‘biometrical’ and of a noun (‘identification’), and thus, as a whole, as meaning ‘biometrical identification’, is indistinguishable from the goods and services concerned. In addition, neither the typographical features nor the graphic elements placed after that abbreviation make it possible to guarantee to the relevant public the identity of the origin of the goods and services concerned. (see paras 68-72, 75)