Opinion of the Advocate General — ECLI:EU:C:2001:52
Date: 2001-01-23
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, I agree with the national court that it is appropriate to bar from registration, as signs which consist exclusively of the shape of goods which is necessary to obtain a technical result, those signs the essential features of which are attributable only to the aim to achieve that technical result. Questions 1, 2, 3, 5, 6 and 7 43. By its first question the Court of Appeal essentially seeks to ascertain whether there is a category of marks which possess a distinctive character, so that they are not excluded under Article 3(1)(b) to (d) of the Directive, or which have acquired it by use, as provided for by Article 3(3), and which, none the less, are invalid under subparagraph (a), which itself refers to Article 2. 44. According to the Directive, the reply must be in the negative: a sign which is incapable of distinguishing cannot logically have a distinctive character. Contrariwise, I do not think that the different language used in each of those provisions ('capable of distinguishing in one and 'distinctive character in the other) and the undeniable semantic difference thus arising (between potentiality and actuality) necessarily suffices in order to assert that there exists a category of signs which are, by their nature, incapable of acquiring a distinctive character. That is how the Court appears to have understood it in its judgment in Joined Cases C-108/97 and C-109/97 Windsurfing Chiemsee (9) in accepting that the distinctive nature of the trade mark acquired through use means that it is capable of identifying the goods and that, consequently, it is capable of distinguishing the goods from those of other undertakings. 45. Nevertheless, for the reasons set out above, I do not believe that this question is relevant in resolving the matter. 46. By its second question, the referring court seeks to ascertain whether the definition of 'trade mark contained in Article 2 of the Directive, when applied to shapes, means, in so far as it requires that they must be capable of distinguishing, that they must contain some arbitrary addition, such as an embellishment with no functional purpose. 47. Whether or not there are functional features in a three dimensional trade mark must be examined in the light of subparagraph (e) of Article 3(1), so that I would refer to the analysis of the fourth question of the national court. Moreover, as I explained above, that provision, contrary to what happens in relation to the cases provided for in subparagraph (b) to (d), does not have as its purpose the protection of the distinctive character of a trade mark. To that extent, the question is irrelevant. None the less, if 'arbitrary addition means any element the essential features of which do not seek to achieve a technical result, the answer must be in the affirmative. Only if a shape contains an addition of this type will it be appropriate to consider whether it has a distinctive character, assuming that it is not a shape dictated by its nature or which gives substantial value to the goods. 48. By the third question, the referring court again asks about the consequences, this time in relation to Article 3(3), of a merely functional shape or, as that court puts it, which does not include any capricious addition. 49. For the reasons already set out above, it is also not necessary to examine the possibility of a merely functional, three-dimensional sign acquiring a distinctive character through use. Indeed, Article 3(3) refers exclusively to subparagraph (b) to (d) of paragraph (1). 50. By its fifth question, the court making the reference seeks clarification of the term 'exclusively, as contained in Article 3(1)(c) of the Directive. 51. By its sixth question, the national court asks the Court of Justice for guidance on the existence of identicality as required by Article 5(1) of the Directive. 52. Lastly, by its seventh question, the national court inquires how the capacity of goods, sold in infringement of trade mark rights, to make people identify them with the trade mark proprietor is to be assessed. 53. Those three questions concern, from different angles, the question of the distinctive character of a trade mark. As I have argued, it is sufficient that theessential features of a particular sign should serve the achievement of a technical result in order for registration to have to be refused. Since the court making the reference in the present case takes that view, it is not appropriate to analyse, for merely hypothetical purposes, the potential difficulties in assessing the distinctive character of a shape having those characteristics. Conclusion 54. The second indent of Article 3(1)(e) of the First Council Directive (89/104/EEC) of 21 December 1988 to approximate the laws of the Member States relating to trade marks must be interpreted as meaning that any shape the essential features of which serve the achievement of a technical result must be regarded as a sign which consists exclusively of the shape of goods which is necessary to obtain such a result, irrespective of whether it is possible to achieve that result using other shapes. If a sign meets those conditions, there is no need to consider whether it has any distinctive character. 1: Original language: Spanish. 2: - OJ 1989 L 40, p. 1. 3: - 'An Act to make new provision for registered trade marks, implementing Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks. 4: - The French text reads 'signes constitués exclusivement par la forme du produit nécessaire à l'obtention d'un résultat technique, the Spanish text 'signos constituidos exclusivamente por la forma del producto necesaria para obtener un resultado técnico, the Italian text 'segni costituiti esclusivamente dalla forma del prodotto necessaria per ottenere un risultato tecnico, and the German text 'Zeichen, die ausschliesslich bestehen aus der Form der Ware, die zur Herstellung einer technischen Wirkung erforderlich ist. No italics in the original texts. 5: - By way of illustration, the European patent, as governed by the Convention of 5 October 1973, protects inventions susceptible of industrial application for a period of 20 years, whereas Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs (OJ 1998 L 289, p. 29) provides for a term of protection which may be renewed up to a total term of 25 years (Article 10). Article 13 of the amended proposal for a Council Regulation on Community designs (Com 00) 660 final) is to the same effect. 6: - Cited in footnote 4, above. 7: - Ibidem. 8: - The semantic contrast which exists in the German version between the adjectives 'erforderlich and 'bedingt is particularly telling. 9: - [1999] ECR I-2779.