Opinion of the Advocate General — ECLI:EU:C:2017:411
Date: 2017-05-31
Language of the case: English
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment;Appeal - unfounded

Summary — Judgment of the Court (Second Chamber), 20 September 2017 1. EU trade mark — Definition and acquisition of the EU trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services — Likelihood of confusion with the earlier mark — Criteria for assessment (Council Regulation No 207/2009, Art. 8(1)(b)) 2. EU trade mark — Definition and acquisition of the EU trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services — Similarity between the goods or services in question — Criteria for assessment (Council Regulation No 207/2009, Art. 8(1)(b)) 3. EU trade mark — EU collective marks — EU collective marks under Article 66(2) of Regulation No 207/2009 — Essential function — Guarantee of the collective origin of the goods sold under the EU collective mark — Geographical indication as a name identifying a product originating in a specific geographical area (Council Regulation No 207/2009, Arts 4, 7(1)(c) and 66; Commission Regulation No 1151/2012, Art. 5(2)) 4. EU trade mark — Definition and acquisition of the EU trade mark — Absolute grounds for refusal — Marks composed exclusively of signs or indications capable of designating the characteristics of a product or service — Aim — Need to preserve availability — EU collective marks under Article 66(2) of Regulation No 207/2009 (Council Regulation No 207/2009, Arts 7(1)(c), 66(2) and 67(2)) 5. EU trade mark — Definition and acquisition of the EU trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services — Protection of well-known earlier mark extended to dissimilar goods or services — Figurative marks Darjeeling et Darjeeling collection de lingerie — Collective word and figurative marks DARJEELING (Council Regulation No 207/2009, Art. 8(5)) 1. See the text of the decision. (see para. 47) 2. See the text of the decision. (see para. 48) 3. First, as is clear from the very wording of Article 66(2) of Regulation No 207/2009, EU collective marks consisting of signs or indications which may serve, in trade, to designate the geographical origin of goods or services constitute EU collective marks within the meaning of paragraph 1 of that article. According to that paragraph, only trade marks that are capable of distinguishing the goods or services of the members of the association which is the proprietor of the trade mark from those of other undertakings may constitute EU collective marks. Moreover, Article 4 of Regulation No 207/2009, which is applicable to collective marks by virtue of Article 66(3) of that regulation, provides, in essence, that only signs that are capable of distinguishing the commercial origin of the goods or services which they designate may constitute EU trade marks. In that regard, the Court has repeatedly held that the essential function of a trade mark is to guarantee the origin of the goods to consumers, in the sense that it serves to identify the goods or services covered by the trade mark as originating from a particular undertaking and thus to distinguish those goods or services from those of other undertakings. While the Court, furthermore, has already held that a trade mark may fulfil other functions than that of indicating origin which are equally worthy of protection against infringement by third parties, such as that of guaranteeing the quality of the goods or services which it designates, or those of communication, investment or advertising, it has nonetheless always emphasised that the essential function of a mark remains that of indicating origin. Therefore, if it were held that the essential function of an EU collective mark within the meaning of Article 66(2) of Regulation No 207/2009 is to indicate the geographical origin of the goods or services offered under such a mark, and not to indicate their commercial origin, that would disregard that essential function. Secondly, whilst Article 66(2) of Regulation No 207/2009 constitutes an exception to the absolute ground for refusal under Article 7(1)(c) of that regulation, that circumstance is not such as to call into question the fact that the essential function of an EU collective mark under Article 66(2) of Regulation No 207/2009 is to guarantee the collective commercial origin of the goods sold under that trade mark, and not to guarantee their collective geographical origin. Moreover, the derogation in Article 66(2) of Regulation No 207/2009 from Article 7(1)(c) thereof is explained by the very nature of the sign covered by the collective marks referred to in that paragraph. Thirdly, such geographical indications, on the one hand, and EU collective marks consisting of signs or indications which may serve, in trade, to designate the geographical origin of goods and services, on the other hand, are signs which are governed by distinct legal regimes and pursue different aims. Thus, whereas the EU trade mark is, in accordance with Article 4 of Regulation No 207/2009, a sign capable of distinguishing the commercial origin of goods or services, a geographical indication is, in accordance with Article 5(2) of Regulation No 1151/2012 on quality schemes for agricultural products and foodstuffs, a name that identifies a product originating in a specific geographical area, whose quality, reputation or other characteristic is essentially attributable to its geographical origin, and at least one of the production steps of which take place in the defined geographical area. (see paras 50-54, 57, 58, 62) 4. Article 7(1)(c) of Regulation No 207/2009 pursues an aim which is in the public interest, namely that descriptive signs or indications relating to the categories of goods or services in respect of which registration is applied for may be freely used by all, including as collective marks or as part of complex or graphic marks. That provision therefore prevents such signs or such indications from being reserved to one undertaking alone because they have been registered as individual trade marks. Thus, an EU collective mark falling within Article 66(2) of Regulation No 207/2009 does not conflict with such a public-interest aim since (i) in accordance with the last sentence of that paragraph, such a mark does not entitle the proprietor to prohibit a third party from using, in the course of trade, those signs or indications, provided that he uses them in accordance with honest practice in industrial or commercial matters, and (ii) Article 67(2) of that regulation requires that the regulations governing use of a mark covered by Article 66(2) authorise any person whose products or services originate from the geographical area concerned to become a member of the association which is the proprietor of the trade mark. (see paras 59, 60) 5. See the text of the decision. (see paras 86-95)