Opinion of the Advocate General — ECLI:EU:C:2008:168
Date: 2008-03-13
Language of the case: Spanish
Based on: Treaty establishing the European Economic Community (1957)
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment;Appeal - unfounded;Appeal - inadmissible
Origin: Spain

summary manner, for example by a reference to those decisions, the Community authority must give an explicit account of its reasoning if the decision goes appreciably further than the previous decisions. (63) 113. Attempting to reconstitute an adequate chain of reasoning which reflects what seems to have been decided in substance, I reach the following interpretation. 114. The Board of Appeal decided, first, that Sämann’s marks protected in Italy, together with the silhouette mark, were all similar to the Aire Limpio mark in the same way and to the same degree so that, for the purpose of assessing the likelihood of confusion, the acquired (64) distinctiveness of one (or more) was shared by all. 115. Second, the evidence of sales volume and advertising expenditure in Italy in respect of one or more of Sämann’s marks, together with the length of registered protection of the CAR-FRESHNER mark, was sufficient to demonstrate that the marks collectively, and thus the silhouette mark individually, had acquired a particularly distinctive character, by reason of the reputation they enjoyed with the relevant public, and thus that, in view of the similarity between the Aire Limpio mark and the silhouette mark, there was a likelihood of confusion. 116. Without forming a view on the factual assessment, I think such reasoning would be defensible. However, in the Board of Appeal’s decision, it is not explicit in its entirety. I have pieced it together from various parts of the decision, some explicit, others implicit. Moreover, there are lacunae which cannot be supplied from the decision itself: (i) on what grounds was it concluded that all Sämann’s marks could be considered so similar to each other that distinctiveness acquired by one was shared by all?; (ii) to which mark or marks did the sales and advertising data relate?; (iii) on what grounds was it justified for the Board of Appeal to take the approach of ‘transferring’ acquired distinctiveness from the marks enjoying longstanding protection in Italy to the silhouette mark, for which registration as a Community trade mark was still pending at the material time, rather than comparing the Aire Limpio mark directly with the former marks? 117. Those factors constitute, in my view, serious shortcomings in the Board of Appeal’s decision. As regards (i) and (ii), it is not possible for the Community judicature to review the legality of the decision without being able to verify that the Board of Appeal identified the mark or marks to which the data related and correctly assessed its or their similarity with the silhouette mark for the purpose of ‘transferring’ the acquired distinctiveness. As regards (iii), it is not possible for the Community judicature to verify that the Board of Appeal did not take that approach because it considered that the similarity between the Aire Limpio mark and the marks enjoying longstanding protection in Italy was insufficient to reach the same conclusion on a direct comparison. 118. It therefore seems to me that the Board of Appeal’s decision does not contain a sufficient statement of reasons to meet the standard required by Article 73 of the Regulation, namely to allow the Community judicature to exercise its power of review. 119. In that light, I find that the Court of First Instance’s assessment, at paragraph 117 of its judgment, that ‘the contested decision shows in a clear and unequivocal manner the reasoning of the Board of Appeal’, cannot be legitimately drawn from the decision. Moreover, in my view, the Court of First Instance did not sufficiently explain its reasons for asserting that the evidence on which the Board of Appeal relied related solely to the ARBRE MAGIQUE mark, or that the Board had considered the silhouette mark to be part of the ARBRE MAGIQUE mark – the latter assertion appearing as possibly a retrospective justification in the light of the Nestlé judgment, which had been delivered since the Board of Appeal’s decision. 120. I am thus of the view that both the Board of Appeal and the Court of First Instance failed to state adequate reasons for their decisions. Conclusions to be drawn 121. I have reached the view that the judgment under appeal is legally flawed in four respects. First, the Court of First Instance erred at paragraph 85 by accepting that the Board of Appeal was entitled to find that the earlier mark had acquired a particularly distinctive character on the sole basis of sales and advertising figures and the date of first registration in Italy. Second, it erred again at paragraph 105 in dismissing the argument that the shape of the earlier mark was necessary to obtain a technical result, without examining the substance of that argument. Third, at paragraph 117, it erred in its assessment of the Board of Appeal’s reasoning. Fourth, it erred, passim, in assuming that the Board of Appeal had based its assessment on evidence relating to the ARBRE MAGIQUE mark when that was not indicated in the decision. 122. In that light, and in view of the fact that no outstanding issues of law raised before the Court of First Instance remain to be dealt with, it seems to me that both the judgment under appeal and the Board of Appeal’s decision should be annulled and the case remitted to OHIM. Costs 123. Under Article 69(2) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. L & D has applied for costs. Its appeal should in my view be successful. OHIM should therefore bear the costs. Conclusion 124. In the light of all the foregoing considerations, I am of the opinion that the Court should: – annul the judgment in Case T-168/04; – annul the decision of the Board of Appeal in Case R 326/2003-2; – remit the case to OHIM for a decision on the facts; – order OHIM to pay the costs of the proceedings at first instance and on appeal. 1 – Original language: English. 2 – Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1; ‘the Regulation’). 3 – See, for example, Case C-334/05 P OHIM v Shaker [2007] ECR I-4529, paragraphs 34 and 35 and the case-law cited there. 4 – See in particular Case C-251/95 SABEL [1997] ECR I-6191, paragraph 24; Case C-425/98 Marca Mode [2000] ECR I-4861, paragraph 38. Those cases concerned national trade marks, and thus fell not under the Regulation but under 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). However, the provisions of the two measures concerning grounds for refusal of registration are essentially identical, and have been interpreted as such by the Court. 5 – That is to say, the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (‘OHIM’). 6 – Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended. 7 – International trade mark No 612525, registered on 9 December 1993, with effect in, inter alia, Italy, for goods in class 5. It appears identical to the silhouette mark, but has not been referred to specifically in the decisions in issue in the present case. 8 – That is to say, trade marks protected in several countries under the Madrid system for the international registration of marks, administered by the World Intellectual Property Organisation. 9 – That summary of the Opposition Division’s analysis is based on the version reproduced in point 6 of the Board of Appeal’s decision. 10 – Decision of 15 March 2004 in Case R 326/2003-2 Julius Sämann v L & D. 11 – Points 22 and 23 of the Board of Appeal’s decision. 12 – Points 24 to 26. 13 – Points 27 and 29, citing Case C-375/97 General Motors [1999] ECR I-5421, paragraph 27. 14 – Points 30 to 32. 15 – Point 33. 16 – Other aspects of the decisions of the Opposition Division and the Board of Appeal are not in issue in this appeal. 17 – Case T-168/04 L & D v OHIM– Sämann (Aire Limpio) [2006] ECR II-2699. 18 – See points 4 and 6 above. 19 – Paragraphs 67 to 71 of the judgment under appeal. 20 – Case C-353/03 Nestlé [2005] ECR I-6135, paragraphs 30 and 32. 21 – Paragraphs 72 to 77. 22 – Case C-192/03 P Alcon v OHIM [2004] ECR I-8993, paragraph 41 and the case-law cited; Case C-259/02 La Mer Technology [2004] ECR I-1159, paragraph 31. 23 – Paragraphs 78 to 84 of the judgment under appeal. 24 – Case C-299/99 Philips [2002] ECR I-5475, paragraph 62. 25 – Paragraph 85 of the judgment under appeal. 26 – Paragraphs 86 to 88. 27 – Paragraphs 89 and 90. 28 – Paragraph 91. 29 – Paragraphs 92 to 94. 30 – Paragraphs 95 and 96. 31 – Paragraphs 97 to 99 of the judgment under appeal, citing Case T-162/01 Laboratorios RTB v OHIM– Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II-2821, paragraphs 30 to 32; Case T-292/01 Phillips-VanHeusen v OHIM – Pash Textilvertrieb und Einzelhandel (BASS) [2003] ECR II-4335, paragraph 47; and SABEL, cited in footnote 4 above, paragraph 24. 32 – Paragraphs 100 to 102 of the judgment under appeal. 33 – Paragraphs 103 to 105. 34 – Case C-447/02 P KWS Saat v OHIM [2004] ECR I-10107, paragraphs 64 and 65. 35 – Paragraphs 113 to 117 of the judgment under appeal. 36 – Statute of the Court of Justice, Article 58. 37 – See point 7 above. 38 – Paragraph 76 of the judgment uses the words ‘significant or even predominant ’ (‘significatif voire prédominant’ in French, ‘significativo e incluso predominante’ in Spanish). 39 – Cited in footnote 20 above. 40 – SABEL, cited in footnote 4, paragraph 25; Case T-117/02 Grupo El Prado Cervera v OHIM – Debuschewitz heirs (CHUFAFIT) [2004] ECR II-2073, paragraph 51; Case T-40/03 Murúa Entrena v OHIM – Bodegas Murúa (Julián Murúa Entrena) [2005] ECR II-2831, paragraphs 55 and 56. 41 – Case C-104/01 Libertel [2003] ECR I-3793, paragraph 65; Case T-36/01 Glaverbel v OHIM (glass-sheet surface) [2002] ECR II-3887, paragraph 23. 42 – Case T-224/01 Durferrit v OHIM– Kolene (NU-TRIDE) [2003] ECR II-1589, paragraphs 72 to 75. 43 – Pursuant to what is now Rule 20(7) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1), as amended. 44 – Case T-186/02 BMI Bertollo v OHIM– Diesel (DIESELIT) [2004] ECR II-1887, paragraph 71. 45 – Case T-6/01 Matratzen Concord v OHIM– Hukla Germany (MATRATZEN) [2002] ECR II-4335, paragraph 55. The same point was discussed on appeal to the Court of Justice, but did not form part of the Court’s reasoning in its order (Case C-3/03 P Matratzen Concord v OHIM [2004] ECR I-3657, paragraphs 38 to 42). The case concerned an application to register as a Community trade mark a sign comprising an element which was descriptive in German and a distinctive element; the earlier national mark, which consisted solely of the German descriptive element, was registered in Spain, where it was not descriptive. 46 – Alcon, La Mer Technology and Philips, cited above in footnotes 22 and 24. 47 – Cited above in footnote 22, paragraph 41. 48 – The application was for registration as a national mark, and thus fell under the essentially identical provisions of Directive 89/104 (see footnote 4 above). Articles 3(1) of the Directive and 7(1) of the Regulation preclude registration of trade marks which, inter alia, (b) are devoid of distinctive character, (c) consist exclusively of indications which may serve in trade to designate characteristics of the products concerned (including their geographical origin) or (d) consist exclusively of signs or indications which have become customary in the trade; Article 3(3) of the Directive provides: ‘A trade mark shall not be refused registration or be declared invalid in accordance with paragraph 1(b), (c) or (d) if, before the date of application for registration and following the use which has been made of it, it has acquired a distinctive character…’ and Article 7(3) of the Regulation reads: ‘Paragraph 1(b), (c) or (d) shall 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.’ 49 – Joined Cases C-108/97 and C-109/97 [1999] ECR I-2779. That judgment concerned the registrability at national level of a mark indicating geographical origin but alleged to have acquired distinctive character. 50 – Windsurfing Chiemsee, paragraphs 51 and 52; Philips, paragraphs 60 to 62. 51 – See also, by way of analogy, the Opinion in Case C-371/02 Björnekulla Fruktindustrier [2004] ECR I-5791, at point 71 et seq. (especially points 73 and 75), where Advocate General Léger considers that the same criteria should be applied both when determining whether a mark has acquired sufficient distinctive character for registration and when determining whether a registered mark has not lost that degree of distinctiveness. 52 – For example, a very high market share might be due to very limited competition, in which case the mark might be perceived by the relevant public as a generic indication rather than as identifying the origin of the products. 53 – Case T-286/02 Oriental Kitchen v OHIM– Mou Dybfrost (KIAP MOU) [2003] ECR II-4953; see in particular paragraph 41 et seq. 54 – See points 74 and 75 above. 55 – Case C-166/95 P Commission v Daffix [1997] ECR I-983, paragraph 24; Case C-367/95 P Commission v Sytraval [1998] ECR I-1719, paragraph 67; Case C-265/97 P VBA v VGB [2000] ECR I-2061, paragraph 114. 56 – It may be noted that the Court of First Instance’s own obligation to provide adequate reasoning in its judgment derives not from Article 73 of the Regulation but from Article 36 of the Statute of the Court of Justice. 57 – See, for example, KWS Saat v OHIM, cited in footnote 34 above, paragraphs 64 and 65. 58 – Point 23 of the Board of Appeal’s decision. 59 – See point 6 of the Board of Appeal’s decision. 60 – Point 30. 61 – Point 31. It may be added that, in contrast to the figures for market share and advertising in Italy, the original reference to yearly sales of 45 million items did not indicate the geographical market concerned. 62 – See paragraph 86 of the judgment under appeal. 63 – See, for example, Case C-350/88 Delacre v Commission [1990] ECR I-395, paragraph 15. 64 – I note that, although it expressed doubt, the Board of Appeal did not reject or refute the opposition division’s finding that the silhouette mark was not intrinsically distinctive.