Judgment — ECLI:EU:T:2001:33
Date: 2001-01-31
Language of the case: German
Court formation: Fourth Chamber
Based on: Treaty establishing the European Economic Community (1957)
Subject matter: Trade marks;Intellectual, industrial and commercial property
Concepts: Signs of which a trade mark may consist;Word marks;Actions before the Community Courts;General
Procedure: Action for annulment - unfounded
Origin: Germany

Summary of the Judgment 
1. Community trade mark — Definition and acquisition of the Community trade 
mark — Signs of which a trade mark may consist — Condition — Distinctive 
character — Assessment in relation to the goods or services for which registration 
applied for 
(Council Regulation No 40/94, Art. 4) 
II - 433 
SUMMARY — CASE T-331/99 
2. Community trade mark — Definition and acquisition of the Community trade 
mark — Absolute grounds for refusal — Trade marks which consist exclusively of 
signs or indications which may serve to designate the characteristics of a product — 
Term 'Giroform' 
(Council Regulation No 40/94, Art. 7(l)(c)) 
3. Community trade mark — Definition and acquisition of the Community trade 
mark — Previous registration of the mark in certain Member States — Effect 
4. Community trade mark — Appeals procedure — Actions before the Community 
judicature — jurisdiction of the Court of First Instance — Directions to OHIM — 
Excluded 
(Council Regulation No 40/94, Art. 63(6)) 
1. It follows from Article 4 of Regulation 
No 40/94, which provides that the 
decisive factor if a sign capable of 
being represented graphically is to be 
eligible for registration as a Commu­
nity trade mark is its capacity to 
distinguish the goods of one undertak­
ing from those of another, that that 
distinctive character can be assessed 
only in relation to the goods or services 
in respect of which registration of the 
sign is applied for. 
(see paras 18-19) 
2. By providing in Article 7(l)(c) of Reg­
ulation No 40/94 on the Community 
trade mark that 'trade marks which 
consist exclusively of signs or indica­
tions which may serve, in trade, to 
designate the kind, quality, quantity, 
intended purpose, value, geographical 
origin or the time of production of the 
goods or of rendering of the service, or 
other characteristics of the goods or 
service' are not to be registered, it was 
the legislature's intention that such 
signs should, by their very nature, be 
regarded as incapable of distinguishing 
the goods of one undertaking from 
those of another. 
With regard to the application for 
registration in respect of 'paper, card­
board and goods made from those 
materials, not included in other classes; 
printed matter', of the word 'Giro-
form', the latter is not capable of 
constituting a Community trade mark, 
since it informs consumers of the 
intended purpose of the products. The 
words 'giro' and 'form', used together, 
designate in financial institution circles 
a printed form relating to bank pay­
ment transactions for debiting a custo­
mer's account. The fact that the pro­
duct in respect of which registration of 
the trade mark was applied for can be 
used to print other sorts of forms does 
not invalidate that conclusion. The fact 
that the sign 'Giroform' consists of one 
II - 434 
MITSUBISHI HITEC PAPER BIELEFELD v OHLM (GIROFORM) 
word and begins with a capital letter 
whereas the expression 'giro form' 
consists of two words and in English 
is normally written in lower-case letters 
does not amount to evidence of any 
creative aspect capable of distinguish­
ing the applicant's products from those 
of other undertakings. 
(see paras 20-21, 24-25) 
3. Where application is made for registra­
tion of a sign as a Community trade 
mark, the Office for Harmonisation in 
the Internal Market (Trade Marks and 
Designs) is not bound by the registra­
tion of that sign as a trade mark in 
several Member States. Having regard 
to the unitary character of the Com­
munity trade mark, registrations 
already made in the Member States 
are a factor which may only be taken 
into consideration, without being given 
decisive weight, for the purposes of 
registering a Community trade mark. 
(see paras 26-27) 
4. Where an appeal is brought before the 
Community judicature against a deci­
sion of one of the Boards of Appeal of 
the Office for Harmonisation in the 
Internal Market (Trade Marks and 
Designs), the Office is required, in 
accordance with Article 63(6) of Reg­
ulation No 40/94, to take the measures 
necessary to comply with the judgment 
of the Court of Justice. Accordingly, 
the Court of First Instance is not 
entitled to issue directions to the 
Office. 
(see para. 33) 
II - 435