62005CC0024_EN
Opinion of the Advocate-General
Opinion of the Advocate-General
I – Introduction
1. This appeal is against the judgment of the Court of First Instance (Fourth Chamber) of 10 November 2004 (2) dismissing an action for annulment of the decision of the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (hereinafter ‘OHIM’) (3) which refused registration of a three-dimensional mark comprised of the shape of a light-brown sweet.
2. Dealing with such signs frequently necessitates examination of their distinctive character, a fundamental condition for registration and one which has given rise to sufficiently abundant case-law on the interpretation of Article 7(1)(b) of the Regulation on the Community trade mark (4) to determine the claims of the appellant who has, however, widened the debate to include the acquisition of that distinctiveness through use.
3. On appeal, the dispute extends to a number of aspects of the procedure before the OHIM Boards of Appeal, which this Opinion likewise addresses.
II – The legislative framework
4. The provisions necessary to determine the present appeal are to be found in the aforementioned Regulation No 40/94.
5. According to Article 4, Community registration is available for ‘any signs capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings’.
6. By virtue of Article 7(1), ‘Absolute grounds for refusal’, registration is to be refused for:
‘(a) signs which do not conform to the requirements of Article 4;
(b) trade marks which are devoid of any distinctive character;
...’
7. Article 7(3) provides that subparagraphs 1(b), (c) and (d) shall 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’.
8. Under the heading ‘Statement of reasons on which decisions are based’, Article 73 requires that ‘[d]ecisions of the Office shall state the reasons on which they are based. They shall be based only on reasons or evidence on which the parties concerned have had on opportunity to present their comments.’
9. On the ex officio examination of the facts, Article 74 states that:
‘1. In proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.
...’
III – Background to the appeal
A – The facts of the dispute at first instance
10. On 30 March 1998 August Storck KG filed an application at OHIM for registration of a Community trade mark consisting of a three-dimensional shape representing a light-brown sweet, reproduced below:
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11. It sought the registration for ‘confectionery’ belonging to Class 30 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 amended.
12. Finding the sign to be devoid of distinctive character within the meaning of Article 7(1)(b) of Regulation No 40/94, by decision of 25 January 2001 the examiner rejected the application, and also denied that it had become distinctive in consequence of use.
13. On 14 February 2001 the appellant lodged an appeal at OHIM against that decision, pursuant to Article 59 of Regulation No 40/94. It sought the partial amendment of the decision and the registration of the mark for ‘confectionery, namely caramel sweets’.
14. On 14 October 2002 the Fourth Board of Appeal of OHIM dismissed the appeal, because the three-dimensional object in question was devoid of distinctive character and because it also did not fall within Article 7(3) of Regulation No 40/94.
15. The Board of Appeal found that the combination of the shape and the colour of the mark applied for did not intrinsically provide any indication of the origin of the product. It also held that the evidence adduced by the appellant did not show that it had acquired distinctive character, in particular for caramel sweets, by reason of its repeated use.
16. Having exhausted the administrative remedies, August Storck KG brought an action for annulment by means of an application lodged at the Registry of the Court of First Instance on 21 May 2003.
B – The judgment under appeal
17. In support of its claim, August Storck KG advanced two pleas in law, alleging infringement of Article 7(1)(b) and of Article 7(3), respectively, of Regulation No 40/94.
18. The Court of First Instance first considered distinctive character in relation to the products and services for which the mark had been applied for and in relation to the perception of their target public. (5)
19. In the first part of that analysis, it observed that the sign in issue consisted of its appearance, that is to say, the representation of an oval-shaped sweet, light brown in colour and characterised by rounded sides, a circular depression in the centre and a flat lower surface. It also confirmed that the confectionery is for a potentially unlimited number of customers of all age groups, being a mass food product. (6)
20. After pointing out that, according to the case-law, the criteria for assessing the distinctive character of three-dimensional trade marks consisting of the appearance of the product itself are no different from those applicable to other categories, (7) that Court went on to observe, nonetheless, that it was necessary to take account of the different, generally somewhat indistinct, perception which people experience of three-dimensional marks in contrast to word or figurative marks, since they instantly recognise the latter as signs identifying the product. (8)
21. The Court of First Instance then considered the overall impression (9) created by the combination of the shape and the colour, to ascertain whether it gives an impression of an indication of origin, and corroborated the view of the Board of Appeal that, in relation to mass market goods, consumers will not pay much attention to the shape or the colour of the confectionery, and it is therefore unlikely that the choice of the average consumer will turn on the form of the sweet. (10)
22. In the view of the Court of First Instance, the Board of Appeal had demonstrated that none of the features of the mark in issue, separately or in conjunction with other features, was distinctive and that, furthermore, the public in question was accustomed to the colour brown and its various shades in that type of sweet. (11)
23. In the light of those considerations and of the fact that the shape in question is not markedly different from a number of basic forms commonly in use in trade, of which it is merely a variant, the Court of First Instance concluded that the purchaser did not immediately and with certainty distinguish the applicant’s sweets from those with a different commercial origin. (12) Consequently, it found that the sign for which registration was sought lacked distinctive character, and dismissed the first plea in law.
24. It also rejected the second plea in law, alleging infringement of Article 7(3) of Regulation No 40/94, on the ground that August Storck KG had not established that the mark had acquired such distinctive character through use.
25. First, it called to mind (13) the case-law on the requirements for that distinctiveness to be present, relating to the identification of goods as originating from a particular undertaking because of the trade mark, (14) to reference to the part of the European Union where it was devoid of distinctive character (15) and to the consideration of certain objective factors in order to find that a mark had acquired distinctive character. (16)
26. Secondly, it refuted August Storck KG’s claims founded on sales figures and data about the high advertising costs incurred in promoting the ‘Werther’s Original’ (‘Werther’s Echte’) caramel sweet, which were not sufficient to show distinctive character resulting from use. It also held that the advertising material submitted contained no evidence whatsoever of the use of the mark in the form applied for, since it was accompanied by word and figurative marks. (17)
27. Thirdly, the Court of First Instance found that the surveys which the appellant had submitted in the proceedings before it had not shown that awareness of the sweet sold by August Storck KG, as an intellectual property right, was based on its shape, rather than on the name ‘Werther’s’. (18)
IV – The proceedings before the Court of Justice
28. August Storck KG’s application was received at the Registry of this Court on 26 January 2005. OHIM lodged a defence on 18 April 2005, and neither a reply nor a rejoinder proved to be necessary.
29. The hearing, at which the representatives of both parties were present, took place on 16 February 2006, jointly with that in Case C‑25/05 P, between the same litigants.
V – Examination of the grounds of appeal
30. The appellant undertaking advances four grounds of appeal, alleging infringement of Article 7(1)(b), of the first sentence of Article 74(1), of Article 73 and of Article 7(3) of Regulation No 40/94.
31. OHIM has applied for a declaration of inadmissibility in relation to the second part of the first ground and the whole of the second and third grounds, and it is therefore necessary to examine those objections at the outset.
A – The admissibility of some of the grounds
1. Admissibility of the second part of the first ground
32. In the statement of appeal, August Storck KG heads the relevant section ‘Appraisal of distinctive character’ and criticises the Court of First Instance for having failed to ascertain whether the sign in issue had a minimum degree of intrinsic distinctiveness. It asserts that the Court of First Instance treated the sweet as a basic geometrical shape and endorsed the view of the Board of Appeal that the average consumer pays little attention to the shape or colour of confectionery.
33. In OHIM’s submission, all those criticisms relate to findings on issues which are not points of law, consideration of which falls outside the competence of the Court of First Instance.
34. By virtue of Article 58 of the Statute of the Court of Justice, appeals to that Court must be limited to points of law, and any venture into appraisal of the facts is therefore prohibited, save where the Court of First Instance has erred as to the facts or distorted the facts or evidence before it. (19)
35. Apart from the fact that that extreme case has not been invoked, the appraisal of the facts by the Court of First Instance reveals no error of that nature: when it examines the appearance of the sweet in question, it simply describes it, finding that it is a basic geometric shape; when it considers the perception by the public, and in legitimate exercise of its discretion, it endorses the reasoning of the Board of Appeal. There has thus been no distortion of the sense of any information or evidence as referred to in Hilti . (20)
36. Accordingly, the appellant is asking the Court of Justice to substitute its own findings for those of the Court of First Instance, which it cannot do according to the powers granted to each court. (21) That part of the first ground is therefore inadmissible.
2. Admissibility of the second and third grounds
37. August Storck KG contends, on the one hand, that the Board of Appeal failed to adduce any evidence to establish that the shape of the sweet is customary, thereby infringing the principle laid down in the first sentence of Article 74(1) of Regulation No 40/94 that the Office must examine the facts of its own motion. At the same time, in the third plea, it challenges that appraisal, asserting that the lack of any corroborative evidence prevented it from expressing an opinion, in contravention of Article 73 of that regulation and in breach of its rights of defence. It maintains that the Court of First Instance also, by approving the findings of OHIM, fell foul of those precepts.
38. However, the claims now made on appeal were not presented before the Court of First Instance, and are therefore inadmissible.
39. Under Article 113(2) of the Rules of Procedure of the Court of Justice, an appeal may not alter the subject-matter of proceedings before the Court of First Instance.
40. It has already been held that to allow one of the parties to introduce on appeal a new plea in law not advanced before the Court of First Instance would be tantamount to extending the ambit of the proceedings, in disregard of the limited nature of the competence of the Court of Justice in that appeal. (22)
41. The judgment under appeal addressed both the pleas in law expressly put forward by the applicant at first instance, namely, infringement of Article 7(1)(b) and of Article 7(3) of Regulation No 40/94. (23) Furthermore, it is apparent from the statement of appeal to the Court of Justice that the allegations of infringement of Articles 73 and 74 of that regulation are made against the OHIM Board of Appeal and only in a subsidiary fashion against the Court of First Instance, on the ground that it had adopted the reasoning of the Board.
42. Since August Storck KG has had the opportunity to challenge the conduct of that Board before the Court of First Instance and there is no indication that it was prevented from doing so, it must bear the consequences of that omission.
43. The second and third pleas are therefore manifestly inadmissible, and it is unnecessary to consider their merits, even in the alternative.
44. That notwithstanding, I would volunteer my belief that the OHIM Boards of Appeal must have a certain margin of discretion to include well-known facts in their examination, so that it is not necessary for them systematically to produce evidence of matters which are in the public domain.
B – The remaining grounds
1. The first part of the first ground, alleging infringement of Article 7(1)(b) of Regulation No 40/94
45. The appellant claims that the Court of First Instance incorrectly imposed more stringent conditions for the distinctive character of the confectionery, requiring that it differ markedly from other kinds of sweets, whereas Article 7(1)(b) indicates that a small degree of distinctive character is sufficient for registration of a Community mark.
46. OHIM submits that that criticism is based on an incomplete reading of the judgment, which is, in addition, consonant with the settled case-law on three-dimensional marks.
47. The wording of the article in question seems to suggest clearly that any sign with a minimum degree of distinctiveness should be eligible for registration. (24) Nevertheless, subsequent developments in the case-law on three-dimensional marks have laid that debate to rest and it is not necessary, therefore, to explore further the dividing line between minimum distinctive character and absolute lack of distinctiveness, a matter still the subject of discussion in relation to graphic and name marks. (25)
48. Although the criteria for assessing the distinctive character of signs consisting of the shape of the product are no different from those applicable to other categories of sign, (26) there is a degree of consensus that, in practice, it is more difficult to prove than in relation to a name or figurative mark. (27)
49. Furthermore, the Court of Justice has on various occasions recognised that the perception of the average consumer, a decisive factor in assessing the distinctive character of signs for which registration is sought, is not necessarily the same in relation to a three-dimensional mark as with other types of mark, where the signs are distinguishable from the appearance of the goods which they cover, since those consumers are not accustomed to making assumptions about the origin of goods from their shape, independently of any graphic or word element. (28)
50. So, paragraphs 35 to 44 of the judgment under appeal accord with what has been said in the preceding points of this Opinion, transposing them to the case in hand without distortion and without making the requirements for three-dimensional marks more stringent, and the criticism which August Storck KG levels against the judgment is therefore unfounded.
51. I therefore propose that the Court of Justice should dismiss the first part of the first ground as unfounded.
2. The fourth ground, alleging infringement of Article 7(3) of Regulation No 40/94
52.
In the fourth ground, the appellant takes issue with the judgment of the Court of First Instance for making three-dimensional signs subject to stricter evidential requirements in order to prove the use through which they acquire distinctive character. It also criticises that decision for confining itself to the public’s perception of the sweet solely at the time of purchase, whereas it should, the appellant claims, have considered other times, in particular the moment at which the sweet is advertised and that when it is eaten.
53. First of all, the appellant’s criticism of the appraisal of the facts and evidence in the judgment under appeal (29) must be rejected, since, as already commented, the appellate competence of the Court of Justice is limited to points of law. Consequently, no reproach can lie against the Court of First Instance in relation to the sales figures, the high advertising costs and the surveys submitted by the appellant, since there is no allegation that their sense has been distorted. The same applies to the assertions regarding the impression of the sign on the wrapping.
54. Having thus confined the allegations in the appeal to its strictly legal context, I shall turn my attention to August Storck AG’s two fundamental claims.
55. The first alleges an error in law on the part of the Court of First Instance when it denied that the appellant had, by means of the first two items of evidence referred to in point 53 of this Opinion, proven the distinctive character acquired by the confectionery through use of its shape, since the documents relating to the advertising of the sweet never presented it as a mark in isolation, but only together with other elements, in particular the ‘Werther’ name sign. The appellant alleges that the Court of First Instance, by refusing to accept that distinctive character had been acquired, is as a matter of principle precluding three-dimensional signs from being distinctive when they occur in juxtaposition with other conventional signs.
56. The interpretation of the judgment under appeal which the appellant is suggesting is peculiar to say the least, since that decision does not prevent registration of three-dimensional objects by virtue of their use on the market in conjunction with other signs.
57. Such an assertion would contradict the recent case-law of the Court of Justice which, in Nestlé, held, in the context of Article 3(3) of Directive 89/104/CEE, (30) that acquisition of distinctive character does not necessarily entail the use of a sign independently, but may also arise from the use, as part of a registered trade mark, of a component of that mark or from use of a separate mark in conjunction with a registered trade mark. (31)
58. However, in paragraphs 63 and 64 of the judgment under appeal, the Court of First Instance, in exercise of its judicial function, merely assessed the evidence in the case before it, with no intention of establishing a general rule. Furthermore, as already stated, it is not for the Court of Justice to assess the relevance or the accuracy of those findings of fact. The argument under analysis cannot, therefore, stand.
59. In addition, the objection as to the decisive moment at which the consumer encounters the sign, for the purposes of examining its distinctive character acquired through use, finds a response in the Nestlé
ruling itself, which finds it to be sufficient that, in consequence of such use, the relevant sectors perceive the product or service, designated exclusively by the mark applied for, as originating from a given undertaking. (32)
60. Apart from my feeling that the present discussion would be more appropriate in the context of Article 8(1)(b) of Regulation No 40/94, it is worth noting that in Ruiz-Picasso and Others
v OHIM
the Court of Justice endorsed the reasoning of the Court of First Instance on the likelihood of confusion, to the effect that the relevant public also perceives the products and the marks relating to them in circumstances unconnected with any act of purchase, although on such occasions displaying a lower level of attention, which does not prevent taking into account the particularly high level of attention which the average consumer pays when he prepares and makes his choice between different products in the same range. (33)
61. In a system in which competition is not distorted, to which the Community legislature aspires, according to the first recital to Regulation No 40/94, it is plain that the protection for proprietors of the type of intellectual property right in question is concentrated in the culminating moment when the consumer makes his decision, the purchase of the product or the engagement of the service, whilst prior advertising is a measure intended to induce that consumer to opt for a particular acquisition, and it is therefore difficult to understand why it should be taken into account on an equal footing with the act of purchasing the product.
62. Even less comprehensible is the appellant’s stricture that, in the context of distinctive character, the Court should also examine the moment of eating the confectionery, since in the case of a three-dimensional mark such as that under analysis, consisting of the product, the taste achieved by dint of the quality of its manufacture will be inseparable from the eating of the sign denoting it: I am sure that what is lauded is not the exquisiteness of the latter action but that of the sweet, and hence the excellence of the mark. The Court of Justice has expressed that view in general terms in Mag Instrument
v OHIM, stating that the more closely the shape for which registration is sought resembles the shape of the product, the less distinctive character it will have. (34)
63. Accordingly, in the judgment under appeal the Court of First Instance did not err in having regard for the purposes of acquisition of distinctive character through use to the situation of the consumer who purchases the sweet.
64. Since the second allegation has not been upheld, the fourth ground must be dismissed as unfounded.
65. In the light of the outcome of the examination of the grounds, some of which are manifestly inadmissible and some unfounded, the only course is to dismiss the appeal in its entirety.
VI – Costs
66. Under Article 122, in conjunction with Article 69(2), of the Rules of Procedure, which by virtue of Article 118 apply to appeal proceedings, the unsuccessful party must be ordered to pay the costs. If, as I propose, the grounds on which the appellant relies are dismissed, it must bear the costs of the appeal.
VII – Conclusion
67. In view of the foregoing, I propose that the Court of Justice dismiss the appeal brought by August Storck KG against the judgment of the Court of First Instance of 10 November 2004 in Case T-396/02, on the grounds that it is in part inadmissible and in part unfounded, and order the appellant to pay the costs of the appeal.
(1) .
(2)  –	Case T-396/02 August Storck v OHIM
[2004] ECR I‑3821.
(3)  –	Decision of 14 October 2002 (Case R 187/2001-4).
(4)  –	Council Regulation (EC) No 40/94 of 20 December 1993 (OJ 1993 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) and by Council Regulation (EC) No 422/2004 of 19 February 2004 (OJ 2004 L 70, p. 1).
(5)  –	Paragraphs 30 to 32 of the judgment under appeal, following the methodology established in Joined Cases C-53/01 to C‑55/01 Linde and Others
[2003] ECR I‑3161, paragraph 41, Case C‑218/01 Henkel [2004] ECR I‑1725, paragraph 50, and Case C-363/99 Koninklijke KPN Nederland [2004] ECR I‑1619, paragraph 34.
(6)  –	Paragraphs 33 and 34 of that judgment.
(7)  –	Case C‑299/99 Philips [2002] ECR I‑5475, paragraph 48, and Linde, paragraphs 42 and 46.
(8)  –	Paragraphs 35 and 36 of the judgment under appeal.
(9)  –	Within the meaning of the judgment in Case C‑251/95 SABEL [1997] ECR I‑6191, paragraph 23, and Joined Cases C‑456/01 P and C-457/01 P Henkel v OHIM
[2004] ECR I‑5089, paragraph 49.
(10)  –	Paragraphs 38 and 39 of the judgment under appeal.
(11)  –	Ibid., paragraphs 40 and 41.
(12)  –	Ibid., paragraphs 44 and 45.
(13)  –	Ibid., paragraphs 56 to 58.
(14)  –	Joined Cases C‑108/97 and C‑109/97 Windsurfing Chiemsee [1999] ECR I‑2779, paragraph 52, and Philips, paragraphs 61 and 62.
(15)  –	In accordance with the judgments of the Court of First Instance in Case T-91/99 Ford Motor
v OHIM (OPTIONS) [2000] ECR II-1925, paragraph 27, and Case T‑399/02 Eurocermex v OHIM (shape of a beer bottle)
[2004] ECR II‑1391, paragraphs 43 to 47.
(16)  –	Such as the market share held by the mark, how intensive, geographically widespread and long-standing use of the mark has been, the amount invested by the undertaking in promoting it, the proportion of the relevant class of persons who, because of the mark, identify goods as originating from a particular undertaking, and statements from chambers of commerce and industry or other trade and professional associations, in keeping with Windsurfing Chiemsee, paragraphs 51 and 52, and Philips, paragraphs 60 and 61.
(17)  –	Paragraphs 61 and
64 of the judgment under appeal.
(18)  –	Ibid., paragraph 66.
(19)  –	Case C‑104/00 P DKV
[2002] ECR I‑7561, paragraph 22. On the scope of the appellate review, see also my Opinion in that case, paragraphs 58 to 60.
(20)  –	Case C‑53/92 P Hilti
v Commission
[1994] ECR I‑667, paragraph 42.
(21)  –	DKV, paragraph 22.
(22)  –	Case C‑136/92 P Commission
v Brazzelli Lualdi and Others
[1994] ECR I‑1981, paragraphs 57 to 59.
(23)  –	Paragraph 25 et seq. of the judgment under appeal.
(24)  –	In legal academic circles, Von Mühlendahl, A., and Ohlgart, D.C., Die Gemeinschaftsmarke, Verlag C.H. Beck/Verlag Stämpfli + Cie AG, Berne/Munich, 1998, p. 28.
(25)  –	In DKV, paragraph 20, the Court of Justice dispensed with the discussion, relieving the Court of First Instance of any obligation to broach such a fine distinction, despite the views expressed in points 44 to 57 of my Opinion in that case.
(26)  –	Philips, paragraph 48, and Linde, paragraph 42.
(27)  –	Linde, paragraph 48, and point 31 of my Opinion in that case.
(28)  –	Joined Cases C-456/01 P and C-457/01 P Henkel, paragraph 52, in relation to packaging, and Case C‑104/01 Libertel [2003] ECR I‑3793, paragraph 65, as regards a colour.
(29)  –	That is to say, paragraph 61 et seq.
(30)  –	First Council Directive of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1). The provision corresponds to Article 7(3) of Regulation No 40/94.
(31)  –	Case C-353/03 Nestlé [2005] ECR I‑6135, paragraph 27 and the first sentence of paragraph 30.
(32)  –	Second sentence of paragraph 30.
(33)  –	Case C-361/04 P [2006] ECR I‑0000, paragraph 41.
(34)  –	Case C‑136/02 P [2004] ECR I‑9165, paragraph 31.