Keywords

Summary



Keywords

1. Community trade mark - Appeals procedure - Appeals before the Community judicature - Jurisdiction of the Court of First Instance - Alteration of a decision of the Office - Power to remit the case to the examiner

(Council Regulation No 40/94, Arts 62(1), and 63(3) and (6))

2. Community trade mark - Definition and acquisition of the Community trade mark - Absolute grounds for refusal - Marks composed exclusively of signs or indications which may serve to designate the characteristics of a product - Objective - Need to leave a sign or indication free - Scope of the examination

(Council Regulation No 40/94, Art. 7(1)(c))

3. Community trade mark - Definition and acquisition of the Community trade mark - Absolute grounds for refusal - Marks composed exclusively of signs or indications which may serve to designate the characteristics of a product - Appraisal of the descriptive character of the sign - Consideration only of goods covered as such in the application for registration

(Council Regulation No 40/94, Art. 7(1)(c))

4. Community trade mark - Definition and acquisition of the Community trade mark - Application for registration of a sign for all goods within a category - Appraisal of the descriptive character of a sign relating to all the goods

(Council Regulation No 40/94, Art. 7(1)(c)))

5. Community trade mark - Definition and acquisition of a Community trade mark - Appraisal of the registrability of a sign - Only Community rules to be taken into account - Earlier registration of the trade mark in certain Member States or third countries - Decisions not binding on the Community judicature

(Council Regulation No 40/94; Council Directive 89/104)

6. Community trade mark - Definition and acquisition of the Community trade mark - Absolute grounds for refusal - Marks composed exclusively of signs or indications which may serve to designate the characteristics of a product - Signs devoid of any distinctive character - STREAMSERVE

(Council Regulation No 40/94, Art. 7(1)(b), (c) and (2))

7. Community trade mark - Decisions of the Office - Legality - Examination by the Community judicature - Criteria - Application to a plea alleging breach of the principle of non-discrimination as a result of the decision-making practice of the Office

Summary

1. Under Article 63(3) of Regulation No 40/94 on the Community trade mark the Court of First Instance has jurisdiction both to annul and to alter a decision of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) and, under Article 63(6) of that regulation, the Office is required to take the measures necessary to comply with the judgment of the Court of First Instance.

Although under Article 63(6) the Court of First Instance is not entitled to issue directions to the Office, by remitting a case to the examiner, the Court would not be imposing on the Office any obligation to take action or refrain from doing so and would not therefore be issuing directions to the Office. It follows that a claim that the case be remitted to the examiner is not inadmissible under the abovementioned provisions.

Moreover, remission of the case to the examiner may be ordered by the Board of Appeal under Article 62(1) of that regulation and therefore falls within the measures which may be taken by the Court of First Instance in the exercise of its power to amend decisions, as provided for in Article 63(3) of Regulation No 40/94.

( see paras 17-19 )

2. Article 7(1)(c) of Regulation No 40/94 on the Community trade mark, which prevents the signs or indications referred to in that provision from being reserved to one undertaking alone because they have been registered as a mark, pursues an aim which is in the public interest, namely that such signs or indications may be freely used by all. The application of that provision does not depend on there being a real, current or serious need to leave a sign or indication free, so that it is necessary only to consider, on the basis of the relevant meaning of the sign at issue, whether, from the viewpoint of the public addressed, there is a sufficiently direct and specific relationship between the sign and the goods for which registration is sought.

( see paras 36, 39-40 )

3. When the descriptive character of a sign for the purposes of Article 7(1)(c) of Regulation No 40/94 on Community trade marks is appraised, only goods appearing as such in the application for registration are taken into account. Conversely, goods which are mentioned as examples of goods falling within the category for which registration is sought must not be taken into account.

( see para. 45 )

4. Where registration of a sign as a Community mark is applied for, without any distinction being drawn, for a category of products in its entirety and that sign is not descriptive of all the products in that category, the ground for refusal referred to in Article 7(1)(c) of Regulation No 40/94 nevertheless applies to that sign for the whole category concerned.

( see para. 46 )

5. The Community trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it is self-sufficient and applies independently of any national system. Consequently, the registrability of a sign as a Community mark must be assessed by reference only to the relevant Community rules and therefore the Office for Harmonisation in the Internal Market (Trade Marks and Designs) and, if appropriate, the Community judicature are not bound by a decision given in a Member State, or indeed a third country, that the sign in question is registrable as a national mark. That is so even if such a decision was adopted under national legislation harmonised with Directive 89/104 on trade marks or in a country belonging to the linguistic area in which the word sign in question originated.

( see para. 47 )

6. Under Article 7(1)(c) of Regulation No 40/94 on the Community trade mark, registration is to be refused for trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the ... intended purpose ... of the goods or of rendering of the service, or other characteristics of the goods or service. Moreover, Article 7(2) of Regulation No 40/94 states that [p]aragraph 1 shall apply notwithstanding that the grounds of non-registrability obtain in only part of the Community.

As regards registration of the term STREAMSERVE for goods falling within the categories apparatus for recording, transmitting and reproducing of sounds and images, data processing equipment including computers, computer memories, viewing screens, keyboards, processors, printers and scanners, computer programs stored on tapes, disks, diskettes and other machine-readable media and listed computer programs, the technique of transferring digital data from a server so as to enable them to be processed as a steady and continuous stream involves, or indeed requires, the use of those goods, since that technique does not merely constitute a field in which those goods are applied but rather is one of their specific functions. Accordingly, for the relevant public to whom it is addressed, which comprises in this case average English-speaking consumers who use the internet and are interested in its audiovisual aspects, there is a sufficiently direct and specific relationship between the term STREAMSERVE and those goods, so that that term can serve, within the meaning of Article 7(1)(c) of Regulation No 40/94, to designate a characteristic of those goods.

As regards the registration of that same term for goods in the categories manuals and publications, it has not been proved that the term STREAMSERVE designates the purpose or any other characteristic thereof. The abovementioned technique does not require or even involve the use of those goods; nor can it be alleged that the term in question is descriptive of those goods because the technique to which that term refers can also be used for the transfer of texts by electronic means. Moreover, so far as concerns the distinctive character, within the meaning of Article 7(1)(b) of Regulation No 40/94, of the term STREAMSERVE for the goods in question, its absence has not been proved.

( see paras 35, 38, 44, 49-50, 60 )

7. Decisions concerning registration of a sign as a Community mark which the Boards of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) are called on to take under Regulation No 40/94 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of the decisions of Boards of Appeal must be assessed solely on the basis of that regulation, as interpreted by the Community judicature, and not on the basis of a previous decision-making practice of those boards.

Where a plea has been put forward before the Community judicature alleging that a Board of Appeal has infringed the principle of non-discrimination by rejecting an appeal brought against the refusal of registration of a given sign, although it previously allowed registration of a comparable sign, two hypotheses exist.

If, by accepting, in the previous case, the registrability of a sign as a Community mark, the Board of Appeal correctly applied the relevant provisions of Regulation No 40/94 and, in a later case comparable to the previous one, the Board of Appeal adopted a contrary decision, the Community judicature will be required to annul the latter decision because of infringement of the relevant provisions of Regulation No 40/94. In this first hypothesis, the plea alleging breach of the principle of non-discrimination must therefore fail. On the other hand, if, by accepting in the earlier case the registrability of a sign as a Community mark, the Board of Appeal erred in law and, in the later case, comparable to the previous one, the Board of Appeal adopted a contrary decision, the first decision cannot be successfully relied on to support an application for the annulment of the latter decision, because observance of the principle of equal treatment must be reconciled with observance of the principle of legality according to which no person may rely, in support of his claim, on unlawful acts committed in favour of another. In the second hypothesis, the plea alleging breach of the principle of non-discrimination must therefore also fail.

( see paras 66-67 )