Opinion of the Advocate General — ECLI:EU:C:2006:786
Date: 2006-12-14
Language of the case: English
Based on: Treaty establishing the European Economic Community (1957)
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment;Appeal - unfounded
Origin: United Kingdom

Summary of the Judgment 1. Appeals – Pleas in law – Plea submitted for the first time at the appeal stage – Inadmissible – Plea seeking solely to challenge the findings of law made by the Court of First Instance in the judgment under appeal – Admissibility 2. Community trade mark – Procedural provisions – Examination of the facts of its own motion – Scope (Art. 225 EC; Statute of the Court of Justice, Art. 58; Council Regulation No 40/94, Art. 74) 3. Community trade mark – Definition and acquisition of the Community trade mark – Absolute grounds for refusal – Trade marks which consist exclusively of signs or indications to designate a product’s characteristics (Council Regulation No 40/94, Art. 7(1)(c)) 1. To allow a party to put forward for the first time before the Court of Justice a plea in law which it has not raised before the Court of First Instance would be to allow it to bring before the Court, whose jurisdiction in appeals is limited, a case of wider ambit than that which came before the Court of First Instance. In an appeal the Court’s jurisdiction is therefore confined to review of the findings of law on the pleas argued before the Court of First Instance. However, since, first, a Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) refused the registration of a mark applied for on the sole basis of Article 7(1)(b) of Regulation No 40/94 on the Community trade mark and, second, the appeal against that decision before the Court of First Instance was based on breach of that provision, it is only at the appeal stage that the interpretation of Article 7(1)(c) could be challenged in the judgment which led that Court to annul the contested decision. In those circumstances, and to the extent that it seeks solely to challenge the findings of law made by the Court of First Instance in the judgment under appeal, an appeal alleging infringement of Article 7(1)(c) of Regulation No 40/94 must be declared admissible. (see paras 21-24) 2. Under Article 74(1) of Regulation No 40/94 on the Community trade mark, the examiners of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) and, on appeal, the Boards of Appeal of the Office are required to examine the facts of their own motion in order to determine whether the mark applied for falls under one of the grounds for refusal of registration laid down in Article 7 of that regulation. It follows that the competent bodies of the Office may be led to base their decisions on facts which have not been alleged by the applicant for the mark. Whilst it is in principle the task of those bodies to establish in their decisions the accuracy of such facts, such is not the case where they allege facts which are well known. The finding by the Court of First Instance as to whether or not facts are well known constitutes a finding of fact which, save where the facts or evidence are distorted, is not subject to review by the Court of Justice on appeal. (see paras 38-39, 45) 3. In order for a mark consisting of a word produced by a combination of elements to be regarded as descriptive for the purposes of Article 7(1)(c) of Regulation No 40/94 on the Community trade mark, it is not sufficient that each of its components may be found to be descriptive. The word itself must be found to be descriptive. As a general rule, a mere combination of elements, each of which is descriptive of characteristics of the goods or services in respect of which registration is sought, itself remains descriptive of those characteristics for the purposes of Article 7(1)(c). However, such a combination may not be descriptive, within the meaning of that provision, provided that it creates an impression which is sufficiently far removed from that produced by the simple combination of those elements. Accordingly, whilst, as regards a trade mark comprising words, its distinctive character may be assessed, in part, in relation to each of its elements, taken separately, it must, in any event, depend on an appraisal of the whole which they comprise. In that regard, the assertion cannot be made that the prior analysis of each of the elements of which a mark is composed is an essential step. On the contrary, the Boards of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) and, where an action is brought, the Court of First Instance are required to assess the descriptiveness of the mark, considered as a whole. (see paras 76-80)