Source: EURLEX
Language: en
Format: md

[Keywords](#IX)
  
[Summary](#SM)

## Keywords

1. International agreements – Paris Convention for the Protection of Industrial Property – Direct effect

2. Community trade mark – Procedural provisions – Examination of the facts of the Office’s own motion

(Council Regulation No 40/94, Arts 7(1) and 74(1))

3. Community trade mark – Definition and acquisition of the Community trade mark – Earlier registration of the trade mark in certain Member States

(Council Regulation No 40/94)

4. Community trade mark – Definition and acquisition of the Community trade mark – Absolute grounds for refusal – Marks devoid of any distinctive character

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

5. Community trade mark – Definition and acquisition of the Community trade mark – Absolute grounds for refusal

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

## Summary

1. The provisions of the Paris Convention for the Protection of Industrial Property cannot be directly relied on in a dispute concerning an application for the annulment of a decision of a Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) refusing registration of a three‑dimensional mark.

First of all, the Community is not a party to the Paris Convention.

Secondly, when the Community legislature considered it necessary to give some provisions of the Paris Convention direct effect, it expressly referred to them in Regulation No 40/94 on the Community trade mark, in particular, in relation to absolute grounds for refusal, in Article 7(1)(h) and (i) of that regulation. By contrast, Article 7(1) makes no such reference in relation to the distinctive character of trade marks, and the Community legislature has in this respect created a separate provision in Article 7(1)(b) of Regulation No 40/94.

Thirdly, while the direct effect of the Paris Convention could flow from the cross-reference made to it by Article 2(1) of the Agreement on Trade-Related Aspects of Intellectual Property Rights (‘the TRIPs Agreement’), such a cross-reference cannot, in the absence of the direct applicability of the TRIPs Agreement, render the Paris Convention directly applicable.

(see paras 40-43)

2. In the context of an examination of the existence of absolute grounds for refusal under Article 7(1) of Regulation No 40/94 on the Community trade mark, the role of OHIM is to decide whether the application for registration of the trade mark falls under an absolute ground for refusal.

In that regard, under Article 74(1) of Regulation No 40/94, OHIM must examine of its own motion the relevant facts that could lead it to apply an absolute ground for refusal.

If an applicant claims that a trade mark applied for is distinctive, despite OHIM’s analysis, it is for that applicant to provide specific and substantiated information to show that the trade mark applied for has either an intrinsic distinctive character or a distinctive character acquired by usage.

(see paras 48-50)

3. A decision whereby OHIM refuses registration of a trade mark sought as a Community trade mark affects neither the validity nor the protection in the territory of a Member State of an earlier national registration of that trade mark.

Pursuant to the fifth recital in the preamble to Regulation No 40/94 on the Community trade mark, the Community law relating to trade marks does not replace the laws of the Member States on trade marks.

Therefore it is possible not only that, because of linguistic, cultural, social and economic differences, a trade mark which is devoid of distinctive character in one Member State is not so in another Member State, but also that a mark devoid of distinctive character at Community level is not so in a Member State.

(see paras 56-58)

4. The criteria for assessing the distinctive character, for the purposes of Article 7(1)(b) of Regulation No 40/94 on the Community trade mark, of three-dimensional marks consisting of the appearance of the product itself are no different from those applicable to other categories of trade mark.

None the less, for the purpose of applying those criteria, the average consumer’s perception is not necessarily the same in the case of a three-dimensional mark consisting of the appearance of the product itself as it is in the case of a word or figurative mark consisting of a sign which is independent of the appearance of the products it denotes. Average consumers are not in the habit of making assumptions as to the origin of products on the basis of their shape or the shape of their packaging in the absence of any graphic or word element, and it may therefore prove more difficult to establish distinctiveness in relation to such a three-dimensional mark than in relation to a word or figurative mark.

In those circumstances, only a mark which departs significantly from the norm or customs of the sector and thereby fulfils its essential function of indicating origin is not devoid of any distinctive character for the purposes of Article 7(1)(b) of Regulation No 40/94.

(see paras 80-81)

5. In order to assess whether or not a Community trade mark has any distinctive character, for the purposes of Article 7(1)(b) of Regulation No 40/94 on the Community trade mark, the overall impression given by it must be considered. That does not mean, however, that one may not first examine each of the individual features of the get-up of that mark in turn. It may be useful, in the course of the overall assessment, to examine each of the components of which the trade mark concerned is composed.

(see para. 82)

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