Judgment — ECLI:EU:T:2000:39
Date: 2000-02-16
Language of the case: French
Court formation: Second Chamber
Based on: Treaty establishing the European Economic Community (1957)
Subject matter: Trade marks;Intellectual, industrial and commercial property
Concepts: Rights of the defence and procedural guarantees;Rights of the defence;General;Appeals before the Boards of Appeal;Signs consisting exclusively of the natural or functional shape of goods or of the shape which gives substantial value to the goods
Procedure: Action for annulment - successful

Summary of the Judgment 
1. Community trade mark — Appeal procedure — Appeal against a decision of the 
examiner remitted to the Board of Appeal — Jurisdiction of the Board of Appeal — 
Limits 
(Council Regulation No 40/94, Arts 7 and 62(1)) 
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SUMMARY — CASE T-122/99 
2. Community trade mark — Decisions of the Office — Observance of the rights of the 
defence 
(Council Regulation No 40/94, Art. 73) 
3. Community trade mark — Definition and acquisition of a Community trade mark — 
Absolute grounds for refusal — Signs composed exclusively of a shape which results 
from the nature of the goods themselves — Sign used for bars of soap in a waisted bone 
shape with indentations — Refusal to register — Not permissible 
(Council Regulation No 40/94, Art. 7(1)(e)(i)) 
4. Community trade mark — Definition and acquisition of a Community trade mark — 
Earlier registration of the trade mark in certain Member States — Effect 
1. An appeal to a Board of Appeal of the 
Office for Harmonisation in the Inter­
nal Market (Trade Marks and Designs) 
seeking to have an examiner's refusal to 
register a Community trade mark on an 
absolute ground overturned places the 
Board, in the examination of the merits 
of the application for registration, in 
the position of the examiner. It follows 
that, under Article 62(1) of Regulation 
No 40/94 on the Community trade 
mark, the Board of Appeal is compe­
tent to reopen the examination of the 
application in the light of all the 
absolute grounds for refusal set out in 
Article 7 of that regulation, without 
being limited by the examiners reason­
ing. However, by raising of its own 
motion and a posteriori a formal 
irregularity not raised by the examiner, 
the Board of Appeal acted ultra vires. If 
the examiner had initially dismissed the 
application for registration as inadmis­
sible owing to a formal irregularity, the 
applicant could have either appealed to 
the Board of Appeal or immediately 
made a fresh application for registra­
tion to the Office. The Board of Appeal 
thus deprived the applicant of that 
choice, and in particular of the second 
option, which would have enabled it to 
have a filing date earlier than that 
which it could obtain after the adop­
tion of the examiner's decision to refuse 
registration on an absolute ground. 
(see paras 26-27, 29-30) 
2. The principle of the protection of the 
rights of the defence, observance of 
which is required by Article 73 of 
Regulation No 40/94 on the Commu­
nity trade mark, which provides that 
decisions of the Office for Harmonisa­
tion in the Internal Market (Trade 
Marks and Designs) are to be based 
only on reasons on which the parties 
had an opportunity to present their 
comments, is infringed by a decision of 
a Board of Appeal of the Office which 
fails to accord the applicant an oppor­
tunity to express its views on the 
absolute grounds for refusal applied 
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PROCTER & GAMBLE V OHIM (SOAP BAR SHAPE) 
by the Board of Appeal of its own 
motion. 
(see paras 40, 42, 47) 
3. Under Article 7(1)(e)(i) of Regulation 
No 40/94 on the Community trade 
mark, signs which consist exclusively 
of a shape which results from the 
nature of goods themselves are not to 
be registered. As regards registration of 
a three-dimensional trade mark applied 
for in respect of soaps, a shape which 
bends inwards along its length and has 
grooves which do not come about as a 
result of the nature of the product itself 
may not be refused registration where 
there are other shapes of soap bar in 
the trade without those features. 
(see paras 54-56) 
4. In regard to an application for regis­
tration of a sign as a Community trade 
mark, the Office for Harmonisation in 
the Internal Market (Trade Marks and 
Designs) is not bound by registrations 
of the sign as a trade mark in other 
Member States. Having regard to the 
principle of the unitary character of the 
Community 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 para 59, 61-62) 
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