Opinion of the Advocate General — ECLI:EU:C:2002:288
Date: 2002-05-14
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 in nature. 86. Nor, moreover, do I believe that approach to be appropriate from the point of view of judicial policy. There is no doubt that in disputes where Article 12 is relied on, the proprietor of the trade mark will always enjoy an advantage, as a result of the inertia created by general acceptance of the effect of official records, and because of the inherent difficulty of delimiting the descriptive from that which is not descriptive. 87. I therefore propose that this ground of appeal be dismissed. Fourth ground: failure to consider the approach adopted by trade mark offices in the Member States 88. The appellant claims that the Court of First Instance failed correctly to define the class of persons potentially interested in the services in respect of which the sign was sought to be registered. In particular, in applying Article 7(2) of the Regulation it failed to take into account the approach adopted by the authorities in the Member States in regard to registration of the sign. 89. In the view of DKV, English is spoken by a large number of European consumers and the trade mark offices of the Member States accordingly assess a sign's eligibility for registration as a trade mark in the light of that linguistic reality. The Court of First Instance ought to have taken that fact into account when making its assessment. If it had done so, the applicant would have been able to show that numerous trade marks with the suffix line have been registered for goods in class 36. 90. The Office contends that, under Article 7(2) of the Regulation, it is sufficient for registration to be refused that the sign be unregistrable in the language of one Member State only, without its being necessary to assess registrability in other areas of the Community. 91. Firstly, nothing in the Regulation requires the Office to reach the same result as the registration authorities in the Member States, still less to apply the same principles of interpretation. The practice in a given Member State, in so far as it may be relevant for the purposes of assessment at Community level, is no more than a helpful indication to which the Office may have regard when assessing a sign's distinctiveness. 92. Secondly, Article 7(2) of the Regulation provides that a sign is to be refused registration even where the grounds for refusal obtain in only part of the Community. If the Court of First Instance has determined with certainty that the proposed sign is descriptive in part of the Community at least - as it did following its consideration of the first plea - no purpose is served by considering the impression conveyed by that sign to speakers of other Community languages. It would have been otherwise if the authorities had decided the opposite, that is to say if they had decided that the sign raised no problems under Article 7(1)(b) or (c) of the Regulation for speakers of the language in which the sign was expressed. Where that is the case, there is to my mind no reason why a sign's eligibility for registration as a trade mark should not be assessed taking account of the perception of that sign among consumers in other countries. Indeed, the objective of the Community trade mark regime renders it advisable for those characteristics to be taken into account. A sign's descriptiveness is not to be determined by formal or abstract means, but by reference to the goods claimed, and in the light of the perception typical of consumers of those goods. However, I have already mentioned this problem in considering the first ground of appeal above. 93. There is no basis in the Regulation for requiring the Office to take account of the approach adopted by the equivalent national authorities, still less where it has already determined that the sign is not registrable in one Community country. Fifth ground of appeal: misuse of powers 94. By its final ground of appeal DKV claims that in refusing to register the sign Companyline, and in spite of having accepted other signs ending in the suffix line for registration, the Office departed from its own guidelines, and thus misused its powers. The Office is in reality seeking to prevent at any price the contested sign from being registered so that the applicant does not become the owner of a group of marks with the same suffix. 95. The Office points out that, in addition to engaging in mere conjecture in regard to the facts, the appellant is merely rehearsing the same arguments as those advanced before the Court of First Instance, without addressing the findings actually made in its judgment. Furthermore, none of the signs to which the appellant refers is comparable to the contested sign because none is as descriptive. 96. Suffice it to observe that the appellant's claims cannot alter the finding by the Court of First Instance at paragraph 33 of the contested judgment that there is no specific and objective evidence to suggest that the contested decision was adopted in pursuit of objectives other than those advanced. The mere fact that the Office treated other signs ending in the suffix line differently, if indeed it did, is no reason to assume that it was exercising a power arbitrarily or to support an allegation of misuse of powers. 97. The fifth ground of appeal must therefore be dismissed along with the appeal as a whole. Costs 98. Under Article 69(2) of the Rules of Procedure, which apply to the appeal by virtue of Article 118, the unsuccessful party is to be ordered to pay the costs. Accordingly, if all of the appellant's grounds of appeal are dismissed, as I propose, the appellant should be ordered to pay the costs. Conclusion 99. I propose that none of the grounds of appeal relied on against the judgment of the Court of First Instance of 12 January 2000 in Case T-19/99 be upheld, and that the Court of Justice dismiss the appeal and order the appellant to pay the costs. 1: - Original language: Spanish. 2: - [2000] ECR II-1, hereinafter the contested decision. 3: - [2001] ECR I-6251. 4: - Case C-363/99 [2002] ECR I-0000. 5: - 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; hereinafter the Trade Mark Directive). 6: - Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1994 L 11, p. 1), as amended by Council Regulation (EC) No 3288/94 of 22 December 1994 for the implementation of the agreements concluded in the framework of the Uruguay Round (OJ 1994 L 349, p. 83). 7: - Annex to the Agreement establishing the World Trade Organization signed in Marrakesh on 15 April 1994 and approved by Council Decision 94/800/EC of 22 December 1994 concerning the conclusion on behalf of the European Community, as regards matters within its competence, of the agreements reached in the Uruguay Round multilateral negotiations (1986-1994) (OJ 1994 L 336, p. 1). 8: - According to the international classification of goods and services in the Nice Agreement for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended. 9: - Joined Cases C-108/97 and C-109/97 [1999] ECR I-2779. 10: - This clarification is necessary because of the legislature's unfortunate lack of precision whereby the capacity to distinguish or potential distinctive character (Article 4 of the Regulation) is considered alongside actual distinctiveness (Article 7(1)(b)) and distinctiveness as a category (Article 7(3)). 11: - See paragraphs 1 and 2 of the operative part of the judgment. 12: - Paragraph 19 of the decision. 13: - Judgment in BABY-DRY , cited above, paragraph 40. 14: - Ibid. paragraphs 42 to 44. 15: - Opinion of 23 January 2001 in the case of Philips (C-299/99 [2001] ECR I-5475). 16: - Paragraph 42 of the judgment in BABY-DRY. 17: - How perceptible the difference is between baby dry and dry baby, for example, may be assessed by stepping into the shoes of speakers of a romance language, who are used to that word order, with only a rudimentary knowledge of English. 18: - Joined Cases C-108/97 and C-109/97 Windsurfing Chiemsee [1999] ECR I-2779, paragraph 29. 19: - See Case C-210/96 Gut Springenheide and Tusky [1998] ECR I-4657, paragraphs 30 to 32. 20: - Whilst it might have been possible for the case of BABY-DRY to be resolved on the basis of the presumed proficiency of the members of the Court of Justice in English, that is unlikely to be true of marks expressed, for example, in Finnish. And it would be aberrant for the type of appellate review to vary according to the language of the sign.