Keywords

Summary



Keywords

1 Community trade mark - Definition and acquisition of the Community trade mark - Signs capable of constituting a trade mark - Requirement - Distinctive character - To be assessed in relation to the goods or services in respect of which registration is applied for

(Council Regulation No 40/94, Art. 4)

2 Community trade mark - Definition and acquisition of the Community trade mark - Absolute grounds for refusing registration - Marks composed exclusively of signs or indications which may serve to designate the characteristics of a product - `BABY-DRY'

(Council Regulation No 49/94, Art. 7(1)(c))

3 Community trade mark - Appeals procedure - Appeal, against a decision of the examiner, remitted to a Board of Appeal - Continuity in terms of their functions between the Board of Appeal and the examiner - Obligations incumbent on Boards of Appeal - Scope

(Council Regulation No 40/94, Arts 61(2) and 62(1))

4 Community trade mark - Appeals procedure - Appeals before the Community judicature - Jurisdiction of the Court of First Instance - Whether it may determine claims the merits of which have not been considered by OHIM - Excluded

5 Community trade mark - Appeals procedure - Appeals before the Community judicature - Jurisdiction of the Court of First Instance - Whether it may issue directions to OHIM - Excluded

(Council Regulation No 40/94, Art. 63(6))

Summary

1 Under Article 4 of Regulation No 40/94 on the Community trade mark, the decisive factor if a sign capable of being represented graphically is to be eligible for registration as a Community trade mark is its capacity to distinguish the goods of one undertaking from those of another. Consequently, the distinctive character of a sign can be assessed only in relation to the goods or services in respect of which its registration is applied for.

2 Under Article 7(1)(c) of Regulation No 40/94 on the Community trade mark, `trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service' are not to be registered. It was thus the intention of the legislature that such signs should, by their very nature, be regarded as incapable of distinguishing the goods of one undertaking from those of another.

The sign `BABY-DRY' - registration of which was sought in respect of `disposable diapers made out of paper or cellulose' and `diapers made out of textile' - is not capable of constituting a Community trade mark, being composed exclusively of words which may serve in trade to designate the intended purpose of the goods.

3 The Office for Harmonisation in the Internal Market (Trade Marks and Designs) was established by Regulation No 40/94 to register Community trade marks which, being valid throughout the territory of the Member States, are an important instrument for the completion of the internal market. The Boards of Appeal, which form part of the Office, also contribute, within the limits set by the regulation, to the application of that instrument. In that sense, there is continuity in terms of their functions between the Boards of Appeal and the examiner whose responsibility it is to take the decisions concerning applications for registration.

It is clear from the scheme of Regulation No 40/94, as well as from Articles 61(2) and 62(1) thereof - concerning the examination of the appeal and the ensuing decision - that it is not open to a Board of Appeal, which enjoys the same powers in determining an appeal as the examiner, simply to reject an applicant's arguments solely on the ground that they were not raised before the examiner. After considering an appeal, the Board should either rule on the substance of the issue or remit the matter to the examiner.

4 In proceedings contesting a decision of one of the Boards of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) refusing an application for registration of a trade mark on one of the absolute grounds for refusal set out in Article 7(1)(b), (c) or (d) of Regulation No 40/94, it is not for the Court to determine an application pursuant to Article 7(3) of the Regulation - seeking to establish that a mark has become distinctive in consequence of the use made of it - where the merits of that claim have not been considered by the Office.

5 Where an action is brought before the Community judicature contesting a decision of one of the Boards of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs), the Office is required under Article 63(6) of Regulation No 40/94 to take the measures necessary to comply with the judgment of the Court of Justice. Accordingly, the Court of First Instance is not entitled to issue directions to the Office.