Opinion of the Advocate General — ECLI:EU:C:2003:15
Date: 2003-01-14
Language of the case: German
Based on: Treaty establishing the European Economic Community (1957)
Subject matter: Trade marks;Intellectual, industrial and commercial property;Approximation of laws
Procedure: Reference for a preliminary ruling
Origin: Germany

Summary of the Judgment 
1. Approximation of laws — Trade marks — Directive 89/104 — Refusal of regis­
tration or invalidity — Three-dimensional trademarks consisting of the packaging of 
goods which are packaged in trade for reasons linked to the very nature of the goods — 
Packaging assimilated to shape of goods — Consequence — Packaging which may 
constitute the shape of the goods within the meaning of Article 3(1)(e) and serve to 
designate characteristics of the goods within the meaning of Article 3(1)(c) of the 
directive 
(Council Directive 89/104, Art. 3(1)(c) and (e)) 
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SUMMARY — CASE C-218/01 
2. Approximation of laws — Trade marks — Directive 89/104 — Refusal of regis­
tration or invalidity — Three-dimensional trademarks consisting of the packaging of 
goods which are packaged for reasons linked to the very nature of the goods — 
Assessment of distinctiveness — Criteria 
(Council Directive 89/104, Art. 3(1)(b)) 
3. Approximation of laws — Trade marks — Directive 89/104 — Refusal of regis­
tration or invalidity — Absence of distinctiveness — Appraisal by the competent 
authority — Examination solely on the basis of national trade usage — Registration 
in another Member State of an identical mark for identical goods — Possibility that it 
is taken into consideration but without being decisive — Registration in another 
Member State of a similar mark for similar goods — No effect 
(Council Directive 89/104, Art. 3(1)(b)) 
1. For three-dimensional marks consisting 
of the packaging of goods which are 
packaged in trade for reasons linked to 
the very nature of the goods, the 
packaging thereof must be assimilated 
to the shape of the goods, so that that 
packaging may constitute the shape of 
the goods within the meaning of 
Article 3(1)(e) of First Directive 89/104 
on trade marks and may, where appro­
priate, serve to designate characteristics 
of the packaged goods, including their 
qua l i t y , w i t h i n the m e a n i n g of 
Article 3(1)(c) of that directive. 
(see paras 37, 44, operative part 1) 
2. For three-dimensional trade marks 
consisting of the packaging of goods 
which are packaged in trade for rea­
sons linked to the very nature of the 
product, their distinctive character 
within the meaning of Article 3(1)(b) 
of First Directive 89/104 on trade 
marks must be assessed by reference 
to the perception of the average con­
sumer of such goods, who is reasonably 
well informed and reasonably observ­
ant and circumspect. Such a trade mark 
must enable such a consumer to dis­
tinguish the product concerned from 
those of other undertakings without 
conducting an analytical or com­
parative examination and without pay­
ing particular attention. 
(see para. 53, operative part 2) 
3. The distinctive character of a trade 
m a r k w i t h i n t h e m e a n i n g of 
Article 3(1)(b) of First Directive 89/104 
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HENKEL 
may be assessed solely on the basis of 
national trade usage, without any need 
for other administrative investigations 
to be undertaken in order to determine 
whether and to what extent identical 
trade marks have been registered or 
have been refused registration in other 
Member States of the European Union. 
The fact that an identical trade mark 
has been registered in one Member 
State for identical goods or services 
may be taken into consideration by the 
c o m p e t e n t a u t h o r i t y of a n o t h e r 
Member State among all the circum­
stances which that authority must take 
into account in assessing the distinctive 
character of a trade mark, but it is not 
decisive regarding the latter's decision 
to grant or refuse registration of a trade 
mark. 
On the other hand, the fact that a trade 
mark has been registered in one 
Member State for certain goods or 
services can have no bearing on the 
examination by the competent trade 
mark registration authority of another 
Member State of the distinctive char­
acter of a similar trade mark for goods 
or services similar to those for which 
the first trade mark was registered. 
(see para. 65, operative part 3) 
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