Therefore, it is not the Court’s function to examine new pleas introduced before it or to review the facts in the light of documents adduced for the first time before it. To allow the examination of those new pleas or such evidence would be contrary to Article 135(4) of the Rules of Procedure of the Court, according to which the parties’ submissions may not alter the subject-matter of the proceedings before the Board of Appeal.

The purpose of actions before the Court is to obtain a review of the legality of decisions of the Boards of Appeal of the Office for Harmonization in the Internal Market (Trade Marks and Designs) within the meaning of Article 63 of Regulation No 40/94 on the Community trade mark. While the Court, under Article 63(3) of Regulation No 40/94, ‘has jurisdiction to annul or to alter the contested decision’, that paragraph must be construed in the light of Article 63(2), which provides that an ‘action may be brought on grounds of lack of competence, infringement of an essential procedural requirement, infringement of the Treaty, of this Regulation or of any rule of law relating to their application or misuse of power’, and in the context of Articles 229 EC and 230 EC. The Court’s review of the legality of a decision by a Board of Appeal must therefore be carried out with regard to the issues of law raised before the Board of Appeal.

It cannot be inferred from the sole fact that a mark and a patronymic were identical that the public concerned will think that the person whose patronymic constitutes the mark designed the goods bearing that mark, with the result that the public would be misled within the meaning of Article 50(1)(c) of Regulation No 40/94 on the Community trade mark. The use of patronymic marks is a widespread practice in all sectors of commerce and the public concerned is well aware that, behind every patronymic mark, there is not necessarily a fashion designer of that name.

The Court of Justice has held that the essential function of a trade mark is to guarantee the identity of origin of the marked goods or services to the consumer or end user by enabling him, without any possibility of confusion, to distinguish the goods or services from others which have another origin. For the trade mark to be able to fulfil its essential role in the system of undistorted competition which the Treaty seeks to establish and maintain, it must offer a guarantee that all the goods or services bearing it have been manufactured or supplied under the control of a single undertaking which is responsible for their quality.

Furthermore, with regard to the conditions for revocation laid down by Article 12(2)(b) of Directive 89/104 to approximate the laws of the Member States relating to trade marks, whose normative content is, in essence, the same as that of Article 50(1)(c) of Regulation No 40/94, the Court of Justice has held that a trade mark corresponding to the name of the designer and first manufacturer of the goods bearing that mark is not, by reason of that particular feature alone, liable to revocation on the ground that that mark would mislead the public, in particular where the goodwill associated with that mark has been assigned together with the business making the goods to which the mark relates. That conclusion is based on the absence of actual deceit or of a sufficiently serious risk that the average consumer will be deceived. Even if the average consumer might be influenced in his act of purchasing the product concerned by imagining that the person to whose name the mark corresponds was involved in its design, the characteristics and the qualities of that product remain guaranteed by the undertaking which owns the trade mark.

Equally it must also be held that a trade mark corresponding to the first name and to the family name of the designer and first manufacturer of the goods bearing that mark is not, by reason of that particular feature alone, liable to revocation on the ground that that mark would mislead the public, where the proprietor of that mark has lawfully acquired, by assignment, a mark consisting of just the family name of the designer and all the creative assets of the business making the goods to which the mark relates.

(see paras 30, 32-34)