Opinion of the Advocate General — ECLI:EU:C:2006:204
Date: 2006-03-23
Language of the case: German
Based on: Treaty establishing the European Economic Community (1957)
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment;Appeal - unfounded;Appeal - inadmissible
Origin: Germany

Summary of the Judgment 1. Community trade mark – Definition and acquisition of the Community trade mark – Absolute grounds for refusal – Trade marks devoid of any distinctive character (Council Regulation No 40/94, Art. 7(1)(b)) 2. Appeals – Pleas in law – Mere repetition of the pleas and arguments put forward before the Court of First Instance – Failure to specify the error of law relied on – Inadmissibility – Challenge to the interpretation or application of Community law by the Court of First Instance – Admissible (Art. 225 EC; Statute of the Court of Justice, Art. 58; Rules of Procedure of the Court of Justice, Art. 112(1), first para., subpara. (c)) 3. Community trade mark – Provisions governing procedure – Examination of the facts by OHIM of its own motion (Art. 225 EC; Statute of the Court of Justice, Art. 58; Council Regulation No 40/94, Art. 74) 4. Community trade mark – Definition and acquisition of the Community trade mark – Absolute grounds for refusal – Trade marks devoid of any distinctive character (Council Regulation No 40/94, Art. 7(3)) 5. Community trade mark – Definition and acquisition of the Community trade mark – Absolute grounds for refusal – Trade marks devoid of any distinctive character (Council Regulation No 40/94, Art. 7(2) and (3)) 1. The criteria for assessing the distinctive character, for the purposes of Article 7(1)(b) of Regulation No 40/94 on the Community trade mark, of three-dimensional marks consisting of the appearance of the product itself are no different from those applicable to other categories of trade mark. None the less, for the purpose of applying those criteria, the relevant public’s perception is not necessarily the same in the case of a three-dimensional mark, which consists of the appearance of the product itself, as it is in the case of a word or figurative mark, which consists of a sign unrelated to the appearance of the products it denotes. Average consumers are not in the habit of making assumptions about the origin of products on the basis of their shape or the shape of their packaging in the absence of any graphic or word element, and it could therefore prove more difficult to establish distinctiveness in relation to such a three-dimensional mark than in relation to a word or figurative mark. In those circumstances, only a mark which departs significantly from the norm or customs of the sector and thereby fulfils its essential function of indicating origin is not devoid of any distinctive character for the purposes of that provision. That case-law, which was developed in relation to three-dimensional trade marks consisting of the appearance of the product itself, also applies where the trade mark applied for is a figurative mark consisting of the two-dimensional representation of that product, since that mark also does not consist of a sign unrelated to the appearance of the products it covers. (see paras 26-29) 2. Under Article 225 EC, the first paragraph of Article 58 of the Statute of the Court of Justice and Article 112(1)(c) of the Rules of Procedure of the Court of Justice, an appeal must indicate precisely the contested elements of the judgment which the appellant seeks to have set aside and also the legal arguments specifically advanced in support of the appeal. That requirement is not satisfied by an appeal which, without even including an argument specifically identifying the error of law allegedly vitiating the judgment under appeal, merely repeats or reproduces verbatim the pleas in law and arguments previously submitted to the Court of First Instance. By contrast, provided that the appellant challenges the interpretation or application of Community law by the Court of First Instance, the points of law examined at first instance may be discussed again in the course of an appeal. Indeed, if an appellant could not thus base his appeal on pleas in law and arguments already relied on before the Court of First Instance, an appeal would be deprived of part of its purpose. (see paras 47-48) 3. Under Article 74(1) of Regulation No 40/94 on the Community trade mark, 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 registration of which is sought 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 put forward 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 rely on facts which are well known. The applicant against whom the Office relies on such well-known facts may challenge their accuracy before the Court of First Instance. The finding, by the Court of First Instance, as to whether the facts are well known or not is a factual assessment which, save where the facts or evidence are distorted, is not subject to review by the Court of Justice on appeal. (see paras 50-53) 4. The market share held by the mark is an indication which may be relevant for the purposes of assessing whether a mark has acquired distinctive character in consequence of the use which has been made of it within the meaning of Article 7(3) of Regulation No 40/94 on the Community trade mark. Such is the case, in particular, where a mark consisting of the appearance of the product in respect of which registration is sought appears to be devoid of any distinctive character because it does not depart significantly from the norm or customs of the sector. It is probable, in such a case, that such a mark is likely to acquire distinctive character only if, following the use which is made of it, the products which bear it have more than a negligible share of the market in the products at issue. For the same reasons, the share of the amount of publicity for the market in the products in dispute represented by advertising investment in promoting a mark may also be relevant for assessing whether the mark has acquired distinctive character through use. Moreover, the question whether or not such information is necessary for assessing whether a given mark has acquired distinctive character through use comes within the scope of the assessment of the facts by the Office for Harmonisation in the Internal Market (Trade Marks and Designs) and, on appeal, by the Court of First Instance. (see paras 76-78) 5. Under Article 7(1)(b) of Regulation No 40/94 on the Community trade mark, read in conjunction with Article 7(2) thereof, a mark must be refused registration if it is devoid of any distinctive character in part of the Community. In addition, under Article 7(3) of Regulation No 40/94, Article 7(1)(b) thereof does not apply if the trade mark has become distinctive in relation to the goods or services for which registration is requested in consequence of the use which has been made of it. It follows that a mark can be registered under Article 7(3) of Regulation No 40/94 only if evidence is provided that it has acquired, through the use which has been made of it, distinctive character in the part of the Community in which it did not, ab initio, have such character for the purposes of Article 7(1)(b). The part of the Community referred to in Article 7(2) may be comprised of a single Member State. (see paras 81-83)