Opinion of the Advocate General — ECLI:EU:C:2016:350
Date: 2016-05-25
Language of the case: English
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment;Appeal - successful
Origin: Germany

Summary — Judgment of the Court (First Chamber), 10 November 2016 1. Appeal — Grounds — Incorrect assessment of the facts and evidence — Inadmissibility — Review by the Court of the assessment of the facts and evidence — Possible only where the clear sense of the evidence has been distorted — Assessment of the functionality of the essential characteristics of a sign — Not included — Examination of the relevance of the legal criteria applied when carrying out the assessment of the functionality of the essential characteristics of a sign — Included (Art. 256 TFEU; Statute of the Court of Justice, Art. 58, first para.) 2. EU trade mark — Definition and acquisition of the EU trade mark — Absolute grounds for refusal — Signs which consist exclusively of the shape of goods which is necessary to obtain a technical result — Concept — Interpretation in the light of the public interest underlying each of them (Council Regulation No 40/94, Art. 7(1)(e)(ii)) 3. EU trade mark — Definition and acquisition of the EU trade mark — Absolute grounds for refusal — Signs which consist exclusively of the shape of goods which is necessary to obtain a technical result — Identification of the essential characteristics of a three-dimensional sign (Council Regulation No 40/94, Art. 7(1)(e)(ii)) 4. EU trade mark — Definition and acquisition of the EU trade mark — Absolute grounds for refusal — Signs which consist exclusively of the shape of goods which is necessary to obtain a technical result — Assessment of the essential characteristics in the light of the technical function of the goods (Council Regulation No 40/94, Art. 7(1)(e)(ii)) 1. See the text of the decision. (see para. 34) 2. See the text of the decision. see paras 38, 39 3. See the text of the decision. (see para. 40) 4. In order to analyse the functionality of a sign for the purposes of Article 7(1)(e)(ii) of Regulation No 40/94 on the Community trade mark, which concerns only signs which consist of the shape of the actual goods, the essential characteristics of a shape must be assessed in the light of the technical function of the actual goods concerned. Thus, and since the sign at issue consists of the shape of actual goods and not of an abstract shape, the technical function of the actual goods at issue must be defined and must be taken into account when assessing the functionality of the essential characteristics of that sign. While it is necessary, for the purpose of that analysis, to proceed on the basis of the shape at issue, as represented graphically, the analysis cannot be made without taking into consideration, where appropriate, the additional elements relating to the function of the actual goods at issue. First, it follows from the case-law of the Court that, when examining the functional characteristics of a sign, the competent authority may carry out a detailed examination that takes into account material relevant to identifying appropriately the essential characteristics of a sign, in addition to the graphic representation and any descriptions filed at the time of application for registration. Secondly, in each of the cases which gave rise to the Court’s judgments of 18 June 2002, Philips (C‑299/99, EU:C:2002:377), of 14 September 2010, Lego Juris v OHIM (C‑48/09 P, EU:C:2010:516), and of 6 March 2014, Pi-Design and Others v Yoshida Metal Industry (C‑337/12 P to C‑340/12 P, not published, EU:C:2014:129), the competent authorities would not have been able to analyse the shape concerned solely on the basis of its graphic representation without using additional information on the actual goods. (see paras 46-50)