Opinion of the Advocate General — ECLI:EU:C:2006:50
Date: 2006-01-19
Language of the case: English
Based on: Treaty establishing the European Economic Community (1957)
Subject matter: Intellectual, industrial and commercial property;Approximation of laws
Procedure: Reference for a preliminary ruling
Origin: United Kingdom

Summary of the Judgment 1. Preliminary rulings – Reference to the Court – National court or tribunal within the meaning of Article 234 EC – Meaning (Art. 234 EC) 2. Approximation of laws – Trade marks – Directive 89/104 – Refusal to register or nullity – Grounds for revocation of the trade mark – Trade marks of such a nature as to deceive the public (Council Directive 89/104, Arts 3(1)(g), and 12(2)(b)) 1. In order to determine whether a body is a court or tribunal within the meaning of Article 234 EC, which is a question governed by Community law alone, it is necessary to take account of a number of factors, such as whether the body concerned is established by law, whether it is permanent, whether its jurisdiction is compulsory, whether its procedure is inter partes, whether it applies rules of law and whether it is independent. The Person Appointed by the Lord Chancellor under Section 76 of the national Trade Marks Act, who may hear appeals on trade mark registration decisions, satisfies those criteria. The Appointed Person is a permanent body which makes findings of law in application of the Trade Marks Act and according to the procedural rules laid down by the Trade Marks Rules 2000. The procedure is, moreover, inter partes. The decisions of the Appointed Person are binding and, in principle, final, subject exceptionally to an application for judicial review. Lastly, during the Appointed Person’s period of office, he enjoys the same guarantees of independence as judges. (see paras 19, 23-24) 2. A trade mark corresponding to the name of the designer and first manufacturer of the goods bearing that mark may not, by reason of that particular feature alone, be refused registration and the trade mark may not be liable to revocation on the ground that it would deceive the public, within the meaning of Articles 3(1)(g) and 12(2)(b) of Directive 89/104 to approximate the laws of the Member States relating to trade marks, in particular where the goodwill associated with that trade mark, previously registered in a different graphic form, has been assigned together with the business making the goods to which the mark relates. The circumstances for refusing registration and the conditions for revocation envisaged by the abovementioned provisions presuppose the existence of actual deceit or a sufficiently serious risk that the consumer will be deceived. In the case of a trade mark corresponding to the name of a person, even if the average consumer might be influenced in his act of purchasing a garment bearing the trade mark by imagining that the person in question was involved in the design of that garment, the characteristics and the qualities of that garment remain guaranteed by the undertaking which owns the trade mark. On the other hand, it would be for the national court to determine whether or not, in the presentation of the trade mark, there is an intention on the part of the undertaking which lodged the application to register that mark to make the consumer believe that the person whose name corresponds to the trade mark is still the designer of the goods bearing the mark or that she is involved in their design. In that case, there would be conduct which might be held to be fraudulent but which could not be analysed as deception for the purposes of Article 3 of Directive 89/104 and which, for that reason, would not affect the trade mark itself and, consequently, its prospects of being registered. (see paras 47-48, 50-51, 53, operative part 1-2)