Opinion of the Advocate General — ECLI:EU:C:2007:320
Date: 2007-06-07
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 - decision unnecessary
Origin: Germany

summary of the law set out in paragraph 13 of the judgment of the Court of First Instance or the application in paragraph 14 of that law to the case before it to suggest that that Court incorrectly interpreted or applied the law. (10) I would accordingly dismiss the second ground of appeal as unfounded. The third ground of appeal 22. Before the Court of First Instance Mr Wilfer had submitted that the Board of Appeal had not considered his additional written statement of 2 July 2003 and its annexes, containing the affidavit of Mr Roesberg, a music magazine editor, and the information on earlier registrations of the ROCKBASS trade mark. 23. In the judgment under appeal the Court of First Instance ruled that Article 59 of the Regulation could not be construed as preventing new facts or evidence submitted during the hearing of an appeal on an absolute ground for refusal from being taking into account after the expiry of the prescribed period within which the grounds of appeal must be presented. Article 74(2) of the Regulation allows the Board of Appeal discretion in taking into account additional evidence produced after that period has expired. It follows that the Board of Appeal should have examined that written statement in order to ensure, at the very least, that it did not contain any new facts or evidence to be considered. Therefore, in failing to consider the written statement the Board of Appeal made a procedural error. However, a procedural irregularity will entail the annulment of a decision in whole or in part only if it is shown that had it not been for the irregularity the contested decision might have been substantively different. (11) The written statement did not contain any new arguments or new evidence that was likely to affect the substance of the contested decision. The affidavit was submitted only in support of two arguments already relied on by Mr Wilfer before the examiner and before the Board of Appeal, and hence could not have affected the substance of the contested decision. As regards the information on the registrations of the ROCKBASS trade mark in Canada, Australia and New Zealand, since registrations already made in Member States are not a decisive factor,(12) it follows, a fortiori, that registrations made in third countries, whose legislation is not subject to Community harmonisation, cannot in any way serve as proof that identical criteria to those set out in Article 7(1)(c) of the Regulation were regarded as having been met. The Court concluded that, since the written statement did not contain any new matters of such a kind as to affect the substance of the contested decision, the Board of Appeal’s failure to consider it could not result in the annulment of that decision. (13) 24. Mr Wilfer’s third ground of appeal is that the Court of First Instance incorrectly applied Article 74 of the Regulation and the case-law of the Community judicature concerning procedural errors. The written statement of 2 July 2003 contained new arguments and evidence which could have affected the substance of the decision of the Board of Appeal. If the Board of Appeal had taken account of that evidence, it could not have maintained its view that the word ‘rockbass’ referred to a bass guitar particularly suited to playing rock music. Taking the written statement into account could therefore certainly have affected the substance of the contested decision. The same applies to the information on the registrations of ROCKBASS in Canada, Australia, New Zealand and the United States [sic], since in the contested decision the Board of Appeal referred to English usage and lexical rules. If the Board of Appeal had taken account of the assessment in English-speaking jurisdictions that ROCKBASS was fanciful and hence sufficiently distinctive and not purely descriptive, the contested decision could have been different in substance. 25. In my view, the third ground of appeal is also unfounded. The Court of First Instance correctly interpreted Article 74(2) of the Regulation and correctly summarised the effect of the case-law of the Court of Justice in paragraph 33 of its judgment. That view is moreover borne out by the recent decision of the Court of Justice in Kaul. (14) The fourth, fifth and seventh grounds of appeal 26. The fourth, fifth and seventh grounds of appeal concern that part of the judgment of the Court of First Instance dealing with Mr Wilfer’s plea that the Board of Appeal had infringed Article 7(1)(c) of the Regulation in two respects. The judgment of the Court of First Instance 27. First, Mr Wilfer had cited various meanings of the component parts of the sign ROCKBASS. He also claimed that in the English language the combination of words ‘rock bass’ has a specific meaning, namely the fish called the ‘rock bass’, which is extremely unusual in relation to the goods claimed. The sign in question, characterised by an unusual grammatical structure and an ambiguous meaning, was therefore seen by the relevant public as a fanciful expression. (15) 28. The Court of First Instance ruled that the descriptive character of a sign was to be assessed in relation to the goods or services in respect of which registration had been sought. (16) The Board of Appeal had rightly adopted the meanings specifically connected with the goods in question. It follows that, as the Board of Appeal held, the word ‘rockbass’ designates a bass guitar which lends itself to playing rock music or, conversely, a style of music played with a bass guitar. That finding cannot be called in question by the fact that the word in question does not appear as such in dictionaries. A trade mark consisting of a neologism composed of elements each of which is descriptive of characteristics of the goods or services in respect of which registration is sought is itself descriptive, unless there is a perceptible difference between the neologism and the mere sum of its parts. That assumes that, because of the unusual nature of the combination in relation to the goods or services, the neologism creates an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed. (17) The sign ROCKBASS does not diverge from English word composition rules, since it corresponds to the syntactically correct juxtaposition of the two words that make it up. There is therefore nothing unusual about the structure of the word, (18) which does not create an impression far removed from that produced by the mere combination of meanings lent by its components. (19) 29. Second, Mr Wilfer had asserted that, despite its possible descriptive connotations, the sign ROCKBASS could not constitute, in relation to the goods in question, a clear, plain indication that is not liable to be misunderstood. In particular, since the bass guitar does not possess any particular characteristics for rock music, it does not seem natural to understand the term ‘rockbass’ as an indication of a particular type of bass guitar or as the description of a function of the bass guitar. Even if the term ‘rockbass’ indicates a bass guitar playing technique, this meaning is not descriptive of the use of the goods, since practically any style of music can be played on any instrument. Consequently, the relationship between the sign and bass guitars is not direct, in particular because it does not relate to their essential characteristics. (20) 30. The Court of First Instance ruled that, for the application of Article 7(1)(c) of the Regulation, it was sufficient for the sign to be descriptive of one of the possible intended purposes of the goods at issue, which the relevant public was liable to take into account when making a choice and which accordingly constituted an essential characteristic thereof. (21) It is common ground that playing rock music is one of the possible intended purposes of the goods in question. Rock is a very well-known modern style which is associated with the electric guitar. Consequently, the reference to that style, followed by the reference to the electric bass guitar, is liable to be taken into account when a choice of guitar is made, particularly if the consumer intends to play rock music. Moreover, as the Board of Appeal has illustrated with reference to various internet sites, the sign composed of the words ‘rock’ and ‘bass’ is likely to be commonly used in trade to designate an electric bass guitar intended for playing rock music. The question of the technical accuracy of such a designation is not pertinent from the point of view of the relevant consumer, who does not have particular technical knowledge. The Court concluded that consequently, with regard to bass guitars, the Board of Appeal had rightly held that the sign ROCKBASS related directly to those goods, and to one of their intended purposes which the relevant public was liable to take into account when making a choice, and was therefore descriptive. (22) The fourth and fifth grounds of appeal 31. Mr Wilfer submits as his fourth ground of appeal that the Court of First Instance did not take account of other possible meanings of the word ‘rockbass’. In German, the English word ‘rock’ has more than 25 different meanings and the word ‘bass’ at least six, of which the musical one is extremely multifactorial. Moreover the German word ‘Rock’ has at least five different meanings and the word ‘Bass’ at least four. Mr Wilfer had indicated before the Court of First Instance that the term ‘rockbass’ could accordingly have numerous meanings. That Court, without giving any reasons, failed to take account of this, thereby distorting or falsifying Mr Wilfer’s explanation and breaching the requirement to give reasons. Moreover, neither the contested decision nor the internet sites to which the Board of Appeal referred therein suggest that the term ‘rockbass’ is likely to be commonly used in trade to designate an electric bass guitar intended for playing rock music. The Court of First Instance therefore also distorted the facts on which its judgment is based and breached the requirement to give reasons. 32. Mr Wilfer submits as his fifth ground of appeal that, in holding that the mark ROCKBASS was not unusual in structure, the Court of First Instance did not take into account not only that the term could have many different meanings but also that it had many possible grammatical permutations e.g. noun/noun, verb/adjective etc. In ignoring this explanation, the Court of First Instance deformed the facts on which its judgment is based and breached the requirement to give reasons. 33. With regard to the fourth ground of appeal, it suffices to note that the Court has ruled that a word must be refused registration if at least one of its possible meanings designates a characteristic of the goods or services concerned. (23) 34. The same approach must in my view be applied by analogy in the context of the fifth ground of appeal. 35. I accordingly consider that the fourth and fifth grounds of appeal are unfounded. The seventh ground of appeal 36. Mr Wilfer submits as his seventh ground of appeal that the Court of First Instance infringed Article 7(1)(c) of the Regulation in various ways. 37. First, the stages of its analysis were in the wrong order. At the outset the Court took into account solely the possible meanings which could in some way designate the characteristics of the goods claimed. There was thus a vicious circle. According to Mr Wilfer, the first stage of the analysis should be to take account of possible meanings from the point of view of an impartial average observer; only at a second stage should those meanings be linked to the goods claimed. If the Court had followed this approach, it would have had to take account of all the meanings of ‘rockbass’ which are obvious to the average impartial professional or amateur musician. Among those obvious meanings is the fish species rock bass. 38. I do not accept that submission. In my view, the approach of the Court of First Instance in taking into account solely the possible meanings which could in some way designate the characteristics of the goods claimed clearly does not perpetuate a vicious circle. It is a consequence of the principle that a word must be refused registration if at least one of its possible meanings designates a characteristic of the goods or services concerned. Even, therefore, if Mr Wilfer is correct in his assertion that among the meanings of ‘rock bass’ obvious to the average professional or amateur musician (many of whom will not be native English speakers) is the North American freshwater fish species rock bass, (24) that would not undermine the approach adopted by the Court of First Instance. 39. Second, Mr Wilfer submits that the Court of First Instance did not base itself on the global impression of the mark but analysed its component parts. It ignored the evident imaginative and allusive meanings of ROCKBASS and instead referred to meanings which were in its view descriptive. It ignored the meaning ‘style of music played with a bass guitar’ and attributed to the term the exclusive meaning ‘bass guitar which lends itself to playing rock music’. It referred only to possible meanings flowing from the dissection of the term into two separate terms, namely ‘rock’ in the sense of rock music and ‘bass’ in the sense of bass guitar. It therefore wholly ignored the general impression given by ROCKBASS. 40. I cannot accept that submission. Admittedly, the Court of First Instance first analysed the component parts of the mark. That, however, is entirely consistent with the settled case-law of the Court of Justice concerning marks consisting of a neologism composed of elements each of which is descriptive of characteristics of the goods or services in respect of which registration is sought: as a general rule, such marks are themselves descriptive. (25) The Court of First Instance then referred to the qualification to that general rule, namely that it does not apply where there is a perceptible difference between the neologism and the mere sum of its parts, correctly stating that that assumes that, because of the unusual nature of the combination in relation to the goods or services, the neologism creates an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed. The Court of First Instance then found that the sign ROCKBASS did not diverge from English word composition rules, since it corresponded to the syntactically correct juxtaposition of the two words that made it up. The Court concluded that there was therefore nothing unusual about the structure of the word, which does not create an impression far removed from that produced by the mere combination of meanings lent by its components. 41. In my view, in that part of its judgment the Court of First Instance combined a faultless analysis of the case-law of the Court of Justice with findings of fact which cannot be reviewed on appeal. 42. Third, Mr Wilfer submits that the Court of First Instance disregarded the fact that intended purpose is not sufficient to find that a mark is directly descriptive. It is clear from paragraph 62 of its judgment that the Court considered that playing rock music is one of the possible intended purposes of the goods. It thereby concluded that that indication could be essential for the purchaser of a bass guitar who intended to play rock music. It considered, however, that the question of the technical accuracy of such a designation was not pertinent. The Court thereby erroneously overlooked the fact that in order for a circumstance to be considered to be essential by the public concerned, it is necessary for that public to be at least aware of its existence. In the present case, there is nothing to suggest that the goods claimed, namely ‘musical instruments’ or ‘electric bass guitars’, are particularly suited to playing a given style of music. Accordingly, the fact that it is possible to play a given style of music such as rockbass on certain of the goods claimed, for example the electric bass guitar, cannot constitute an essential characteristic of those goods, still less of other musical instruments claimed or of accessories. As the Court of First Instance itself stressed in paragraph 66, a sign’s descriptiveness must be assessed individually by reference to each of the categories of goods claimed. 43. Mr Wilfer thus appears to be asserting that the mere fact that a word describes an intended purpose of the goods or services to be covered by a proposed word mark does not suffice to preclude registration of that mark on the ground that it is descriptive. I confess to having some difficulty understanding how that argument can withstand the most cursory examination of the wording of Article 7(1)(c) of the Regulation. That provision states unequivocally that ‘trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the … intended purpose … of the goods or service’ ‘shall not be registered’. 44. At the hearing counsel for Mr Wilfer emphasised that the ‘rock bass’ style of music is not a distinctive characteristic of goods or of musical instruments. Again, however, I do not see how that argument assists Mr Wilfer. It is surely self-evident that one of the intended purposes of a bass guitar is to play rock music. That statement will not become less true if a given person buys a bass guitar with the (possibly misguided) idea of playing classical music on it. Still less is it undermined by the example provided by counsel for Mr Wilfer, who argued that its logical conclusion is that the Honda Jazz trade mark is unregistrable because it is possible to play jazz music in cars. 45. I am accordingly of the view that the seventh ground of appeal is unfounded. The sixth ground of appeal 46. Before the Court of First Instance Mr Wilfer had submitted that, as far as guitar accessories are concerned, the case-law (26) required a separate examination of each category of goods or services claimed. In the present case, the word ‘rockbass’ has no clear link with either the essential characteristics of guitar accessories in Class 15 or the goods designated in Classes 9 and 18. (27) 47. The Court of First Instance ruled that, in relation to containers, cases and bags in Class 18, since Mr Wilfer had not drawn any distinctions within this generic category the Board of Appeal’s findings were to be confirmed in so far as they related to all goods in that category. With respect to the equipment in Class 9, it is clear from the arguments of the parties that the same equipment may be used for different instruments. Their use in connection with the bass guitar is therefore just one of their possible uses. There is a sufficiently direct and specific relationship between the sign and the goods in question where the technique evoked by the sign involves, or indeed requires, the use of those goods. That technique does not merely constitute in this case a field in which those goods are applied but rather is one of their specific functions. (28) Accordingly, the fact that the goods in question may also be used in another way, to which the sign in question does not refer, cannot undermine that finding. (29) In the present case, even though the equipment in question is not intended to be used exclusively in connection with bass guitars, it is nevertheless not used autonomously in relation to the handling of electric instruments. In addition, that equipment must be used in order to play the electric guitar, which is not capable of producing musical sounds on its own. Thus, the possibility of playing an electric bass guitar is a function of the equipment referred to in the application and not simply one of the many fields in which the equipment is applied. In particular, the combined use of these two categories of goods is required or, at the very least, implied by their inherent characteristics. (30) 48. By his sixth ground of appeal, Mr Wilfer submits first that the Court of First Instance disregarded the fact that containers, cases and bags intended to transport musical instruments and their accessories fall within Class 15. In line with this, Mr Wilfer’s list of goods in Class 15 included ‘containers, cases and bags adapted to the aforementioned goods’. The ‘containers, cases and bags’ in Class 18 are therefore intended for any use except transporting ‘musical instruments and their accessories’. The Court of First Instance has distorted the facts without giving reasons. 49. Mr Wilfer submits second that in stating that the goods in Class 9 claimed by Mr Wilfer are ‘not used autonomously in relation to the handling of electric instruments’, (31) the Court of First Instance distorted the facts without giving reasons. Mr Wilfer had explained that none of the products mentioned in Class 9 assumed the use of a ‘musical instrument’ or ‘electric guitar’. On the contrary, ‘technical sound equipment, mixing desks, sound effect equipment, amplifiers, loudspeaker boxes, active loudspeaker boxes (combos)’ can equally be used to transmit many other sound signals, e.g. animal cries, or video, television or radio signals. It is therefore unrealistic and arbitrary to suppose that the principal function of that equipment is common use with an electric bass guitar. That is so a fortiori for ‘containers, cases and bags for [technical sound equipment, mixing desks, sound effect equipment, amplifiers, loudspeaker boxes, active loudspeaker boxes (combos)]’ since they are not offered together with musical instruments or electric bass guitars but only with the products mentioned in Class 9. 50. I agree with OHIM that the first part of the sixth ground of appeal, although pleaded in terms of distortion of the facts, in reality seeks a reassessment of the facts found by the Court of First Instance, and indeed the Board of Appeal. It appears from the contested decision that Mr Wilfer had not excluded the possibility that the containers, cases and bags in Class 18 would be used together with guitars. On that basis, the Board of Appeal concluded that the intended purpose of those goods was described by the proposed mark. The confirmation of that finding by the Court of First Instance cannot be reviewed on appeal. 51. With regard to the second point, Mr Wilfer does not appear to contest the statement by the Court of First Instance that one of the possible uses of the equipment in Class 9 is in connection with the bass guitar. The fact that that equipment may also be used in another way, to which the sign in question does not refer, does not mean that the sign is not descriptive. (32) The Court of First Instance was therefore correct to conclude that the sign could not be registered for equipment in Class 9. 52. I am accordingly of the view that the sixth ground of appeal is in part inadmissible and in part unfounded. Conclusion 53. For the reasons given above, I consider that the Court should: – dismiss the appeal; – order Mr Wilfer to pay the costs of the appeal. 1 – Original language: English. 2 – [2005] ECR II-1981. 3 – OJ 1994 L 11, p. 1. 4 – First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1). In the context of other substantially identical provisions of Directive 89/104 and the Regulation, the Court has made it clear that its interpretation of one provision must also apply to the other: Case C-425/98 Marca Mode [2000] ECR I-4861, paragraphs 26 to 28. 5 – The 13th recital to the Regulation states that the jurisdiction which the Regulation confers on the Court of Justice to cancel and reform decisions of the appeal courts is to be exercised at the first instance by the Court of First Instance in accordance with Council Decision 88/591/ECSC, EEC, Euratom of 24 October 1988 establishing a Court of First Instance of the European Communities (OJ 1988 L 319, p. 1), as amended by Decision 93/350/Euratom, ECSC, EEC of 8 June 1993 (OJ 1993 L 144, p. 21). 6 – In, respectively, Classes 9, 15 and 18 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended. 7 – Paragraphs 10 and 11 of the judgment under appeal, citing the order of the Court of First Instance in Case T-14/04 Alto de Casablanca v OHIM (Veramonte) [2004] ECR II-3077, paragraph 9, and the case-law there cited. 8 – Paragraphs 12 to 14 of the judgment under appeal, citing Case T-222/02 HERON Robotunits v OHIM (ROBOTUNITS) [2003] ECR II-4995, paragraphs 50 and 51, and the case-law there cited. 9 – See point 9 above. 10 – See also paragraph 54 of the judgment of the Court of Justice in Case C-29/05 P OHIM v Kaul, delivered on 13 March 2007, which confirms the understanding of the Court of First Instance in the present case. 11 – Citing Joined Cases 209/78 to 215/78 and 218/78 Van Landewyck and Others v Commission [1980] ECR 3125, paragraph 47, Case C-142/87 Belgium v Commission [1990] ECR I-959, paragraph 48, and Case C-447/02 P KWS Saat v OHIM [2004] ECR I-10107, paragraphs 47 to 50. 12 – Case T-393/02 Henkel v OHIM [2004] ECR II-4115, paragraph 46, and the case-law there cited. 13 – Paragraphs 28 to 36 of the judgment under appeal. 14 – Cited in footnote 10; see in particular paragraphs 42, 43 and 63. 15 – See paragraph 39 of the judgment under appeal. 16 – ROBOTUNITS, cited in footnote 8, paragraph 41. 17 – Citing, in connection with Directive 89/104, Case C-363/99 Koninklijke KPN Nederland [2004] ECR I-1619, paragraph 100, and Case C-265/00 Campina Melkunie [2004] ECR I-1699, paragraph 43. 18 – Case T-356/00 DaimlerChrysler v OHIM (CARCARD) [2002] ECR II-1963, paragraph 29, and ROBOTUNITS, cited in footnote 8, paragraph 39. 19 – Paragraphs 56 to 60 of the judgment under appeal. 20 – See paragraphs 40 and 41 of the judgment under appeal. 21 – ROBOTUNITS, cited in footnote 8, paragraph 44, and Case T-311/02 Lissotschenko and Hentze v OHIM (LIMO) [2004] ECR II-2957, paragraph 41. 22 – Paragraphs 61 to 63 of the judgment under appeal. 23 – Case C-191/01 OHIM v Wrigley [2003] ECR I-12447, paragraph 32; see also, with regard to the Trade Marks Directive, Campina Melkunie, cited in footnote 17, paragraph 38. 24 – Ambloplites rupestris; in French, perche des roches, crapet de roche or rouget de roche; in German, gemeiner Felsenbarsch or gemeiner Sonnenbarsch. 25 – See the cases referred to by the Court of First Instance and cited in footnote 17. See also, with regard to the Regulation, the judgment delivered on 19 April 2007 in Case C-273/05 P Celltech, paragraph 77. 26 – Case T-219/00 Ellos v OHIM(ELLOS) [2002] ECR II-753, paragraph 41. 27 – See paragraph 42 of the judgment under appeal. 28 – Case T-106/00 Streamserve v OHIM (STREAMSERVE) [2002] ECR II-723, paragraph 44. 29 – ROBOTUNITS, cited in footnote 8, paragraph 47. 30 – Paragraphs 70 to 73 of the judgment under appeal. 31 – Paragraph 73. 32 – See point 33 above.