Source: EURLEX
Language: en
Format: md

Conclusions

OPINION OF ADVOCATE GENERAL  
RUIZ-JARABO COLOMER   
delivered on 24 October 2002 [(1)](#Footnote1)  
  
  
**Joined Cases C-53/01 to C-55/01**   
  
Linde AG, Winward Industries Inc. and Rado Uhren AG  
  
  
  
(Reference for a preliminary ruling from the Bundesgerichtshof (Germany))  
((Trade Mark Directive – Signs capable of constituting a trade mark – Signs consisting exclusively of the shape of a product – Distinctive character – Criteria))  
  
  
  
  
1. This reference for a preliminary ruling concerns general aspects of the method of assessing whether three-dimensional shape-of-product
marks are distinctive. The recent judgment of 18 June 2002 in
*Philips* [(2)](#Footnote2) resolves most of the doubts entertained by the national court.It is worthy of note that, although the method which the referring court appears to favour and that derived by the Court of
Justice from the Trade Mark Directive
[(3)](#Footnote3) differ appreciably, that difference is not reflected in the practical results of the respective methods. Both cases show
how difficult it is for such signs to be eligible for registration.Facts and the main proceedingsCase C-53/012. Linde AG, a company established in Wiesbaden (Germany), applied for registration as a three-dimensional mark of the representation
of a vehicle of the type
motorised trucks and other mobile works vehicles, particularly fork-lift trucks.The competent trade mark office of the Deutsches Patentamt (German Industrial Property Registry) refused registration on the
ground that the mark was devoid of any distinctive character.The appeal lodged by the applicant at the Bundespatentgericht (Federal Patents Court, Germany) did not succeed. That court
held that registration of the trade mark applied for had to be refused under Paragraph 8(2)(1) of the Markengesetz (German
Trade Mark Law),
[(4)](#Footnote4) and gave the following reasons (as they appear in the order for reference): It is not necessary to decide whether the sign for which registration has been applied [for], and which consists entirely
in a realistic representation of the goods in question from different angles, is a three-dimensional image eligible for registration
as a trade mark within the meaning of Paragraph 3 of the Markengesetz or, rather, falls within Paragraph 3(2) of the Markengesetz
[equivalent to Article 3(1)(e) of the Trade Mark Directive].The trade mark applied for is in any event devoid of any distinctive character in the terms of Paragraph 8(2)(1) of the Markengesetz
[Article 3(1)(b) of the Directive]. To determine whether the trade mark has distinctive character in the present case, it
is necessary, as in the case of all other signs capable of constituting trade marks, to establish whether and to what extent
they may serve, in trade, to indicate the undertaking from which the products in question originate. This is not the case
here. The trade does not see in the representation of the product anything more than the product itself and attributes no
distinctive function to it, as long as it remains in its familiar context. The shape of the product does not go beyond the
parameters of modern industrial design. In its non-technical aspects, it is not so different from standard shapes as to cause
the trade to see it not merely as a variation of a familiar shape, but as the distinctive sign of an undertaking. In the motor
vehicle sector in particular ─ including the commercial vehicle sector ─ the tendency to use
softline contours has been standard for years, so that this sort of design gives no indication as to a specific producer. The trade
mark applied for differs too little from the usual shapes. It displays no supplementary imaginative element. The trade does
not regard it as a reference to the undertaking of origin.Case C-54/013. Winward Industries Inc., established in Taipei (Taiwan), applied for registration of a torch as a three-dimensional mark.The trade mark office of the Deutsches Patentamt refused registration on the ground that the sign was devoid of any distinctive
character.4. The appeal to the Bundespatentgericht did not succeed for the following reasons (according to the order for reference):It can be assumed that the design is capable of being a trade mark in the abstract under Paragraph 3(1) of the Markengesetz
[equivalent to Article 2 of the Directive]. The question whether there are grounds for refusal under Paragraph 3(2)(1) or
(2) of the Markengesetz [equivalent to the first two indents of Article 3(1)(e) of the Directive] can be left aside. Concerns
might arise over the fact that few possibilities would be left open to competitors for variations on the design of torches.
No definitive decision is required since the trade mark applied for lacks the distinctive character required by Paragraph
8(2)(1) of the Markengesetz. It is a typical torch shape, which, notwithstanding a certain elegance, remains commonplace in
the market. A consumer in this sector will not see in the shape of the product any indication that it originates from a particular
undertaking. In view of the minimal differences compared to competing products, even an observant consumer will hardly be
in a position to identify a particular manufacturer from memory. Nor can distinctive character be asserted by analogy with
signs consisting of words in the case of which only the graphic effect is capable of being protected. There are stricter requirements
as to the distinctive character of the shape of goods than there are for the usual types of trade marks consisting of words
or pictures. The reason for this is the fundamental difference between trade mark law, which serves to identify origin, and
design rights, which primarily protect designs. Trade mark law, unlike the law on design rights, prevents no one from marketing
the same product with a different designation. The trade is used to signs consisting of words and pictures. It will therefore
not perceive the shape of goods as identifying a firm but will refer to the brand name on the product, except in exceptional
cases.Case C-55/015. Rado Uhren AG (Rado Watch Co. Ltd) (Rado Montres SA), established in Lengnau bei Biel (Switzerland), applied for registration
of a three-dimensional mark consisting of the graphic representation of a wristwatch which it already owned as an international
mark.The trade mark office of the Deutsches Patentamt refused registration on the ground that the sign was devoid of any distinctive
character and that there was a need to preserve availability.The appeal was dismissed. The Bundespatentgericht found that the sign could not be protected, since it fell within the ground
of refusal in Paragraph 8(2)(1) of the Markengesetz, and gave the following reasons in that regard (as stated in the order
for reference): It should be assumed that the subject of the application to extend protection is the specific three-dimensional shape of this
watch face with or without covered time display and cut-away strap and not a form of blanket protection for individual features
of watch shapes of otherwise differing designs.On that interpretation of the application to extend protection there are no objections regarding the abstract distinctive
character of the internationally registered trade mark under Paragraph 3(1) of the Markengesetz. Nor are there apparent grounds
for refusing protection under Paragraph 3(2) of the Markengesetz.However the internationally registered trade mark is not capable of protection because it is devoid of distinctive character
under Paragraph 8(2)(1) of the Markengesetz. The three-dimensional depiction of the watch face with or without covered time
display and cut-away strap which is the same width as the watch face lacks the required distinctive character in its specific
design.Protection can only be conferred where an original design that is indicative of origin can overcome the need to preserve the
availability of the elementary shape of the product and its lack of distinctive character. A fairly strict test must be applied
for the purposes of establishing the originality of the product or its parts because they are themselves the most important
means of description and, if they are monopolised, there is a risk that competitors will be impeded in the design of their
products and it is at least conceivable that there is a need to preserve availability. The degree of originality required
for registration of a trade mark also depends on the particular conditions in the product sector in question.On the market in wristwatches there is traditionally an extraordinary variety of shapes and designs. There is therefore a
particular need to keep this sector free from trade mark protection which unnecessarily restricts freedom of design so that,
in the future, competitors are still able to make full use of the shapes available in any new combination. The internationally
registered trade mark before us predominantly displays elements of design which are commonplace or already in use in a similar
form.The questions referred for a preliminary ruling6. The applicants in the three sets of proceedings all lodged appeals for infringement of the law before the Bundesgerichtshof
(Federal Court of Justice), which decided to stay proceedings and refer for a preliminary ruling the following questions on
the interpretation of Article 3(1)(b), (c) and (e) of the Trade Mark Directive:(1) In determining whether a three-dimensional trade mark which depicts the shape of a product has distinctive character within
the meaning of Article 3(1)(b) of the above Directive is there a stricter test for distinctive character than in the case
of other forms of trade marks?(2) In the case of three-dimensional trade marks which depict the shape of the product, does Article 3(1)(c) of the Directive
have any significance independently of Article 3(1)(e)? If so, when considering Article 3(1)(c) ─ or alternatively Article
3(1)(e) ─ must regard be had to the interest of the trade in having the shape of the product available for use, so that registration
is, at least in principle, ruled out and is possible as a rule only in the case of trade marks which meet the requirements
of Article 3(3), first sentence, of the Directive?Procedure before the Court of Justice7. The requests for a preliminary ruling were received at the Court Registry on 8 February 2001. The applicants in the various
actions before the national court appeared before the Court, as did the United Kingdom and Austrian Governments and the Commission.
By order of the President of the Court of 15 March 2001, the cases were joined for the purposes of the written procedure and
the oral procedure.Analysis of the questions referredThe first question referred to the Court8. By its first question, the Bundesgerichtshof wishes to know whether Article 3(1)(b) of the Trade Mark Directive must be interpreted
as meaning that the assessment of distinctive character is stricter in the case of three-dimensional signs consisting of the
shape of the product.9. All the parties appearing before the Court are of the view that there is no reason why the assessment of the distinctive character
of three-dimensional signs should entail a stricter test than any other of the signs referred to in Article 2 of the Directive.
The referring court itself suggests that interpretation.10. I share the parties' view. First, the Directive does not contain any provision suggesting that three-dimensional product shapes
merit different ─ stricter ─ treatment when an assessment is made as to whether they possess
*actual distinctive character* .
[(5)](#Footnote5) However, there are public-interest reasons which militate in favour of applying different rules by reference to the types
of signs which may constitute trade marks, which are, in accordance with the non-exhaustive list in Article 2 of the Directive,
words, including personal names, designs, letters, numerals, the shape of goods or of their packaging. The Directive contains other provisions, to which I shall refer below, which deal with the requirement that certain signs
should not be the object of exclusive rights.11. In any event, the Court of Justice has stated that this is so with particular clarity, by holding that
Article 2 of the Directive makes no distinction between different categories of trade marks. As a result,
the criteria for assessing the distinctive character of three-dimensional trade marks ... are thus no different from those
to be applied to other categories of trade mark.
[(6)](#Footnote6)12. A separate issue is, as the Austrian and United Kingdom Governments have pointed out, how hard it is in practice for many
product shapes to demonstrate sufficient distinctive character for the purposes of registration.First, the essential characteristics of those signs must not result from the nature of the product itself or be attributable
to the need to obtain a technical result or to give substantial value to the product, otherwise the sign will be caught by
the absolute grounds for refusal in Article 3(1)(e), as interpreted by the Court of Justice in
*Philips* . I shall refer to this issue below in the analysis of the second question.However, in addition, inasmuch as shape is dictated by function and similar products are therefore usually similar in appearance,
it can be difficult for the original shape to be distinctive, although it may none the less acquire distinctiveness through
use, in accordance with Article 3(3) of the Directive. In any event, it is unlikely that the average consumer will perceive
minor differences as an indication of the product's origin.It is necessary to point out that such practical difficulties derive from the very nature of three-dimensional shapes and
from the idiosyncrasies of consumers' habits rather than from what is alleged to be a stricter approach in the assessment
of distinctive character.13. In short, to my mind the answer to be given to the national court is that Article 3(1)(b) of the Trade Mark Directive is not
to be interpreted as requiring a stricter test of distinctive character for a three-dimensional sign depicting the shape of
the product than for the other types of trade marks referred to in Article 2.The second question referred to the Court14. With its second question, the Bundesgerichtshof wishes to know, first, whether the assessment of three-dimensional marks consisting
of the shape of the product is to be carried out solely under Article 3(1)(e) of the Directive or whether Article 3(1)(c)
also enters into play. In the latter case, the national court asks whether in the course of that assessment account should
also be taken of the interest of the trade in certain signs not being appropriated (the so-called
need to preserve availability or
*Freihaltebedürfnis* , to use the term coined in German legal writing),
[(7)](#Footnote7) so that registration is systematically refused and consequently possible only where the sign has acquired distinctiveness
through use (Article 3(3), first sentence, of the Directive).15. The question before the Court of Justice is whether account should be taken of the public interest in restricting the extent
to which certain signs consisting of the shape of the product may be appropriated in order that they may be freely used by
operators as a whole and, in particular, under which provision it is necessary to proceed.Once the answer to that question is known, any doubts are dispelled as to the possibility of
remedying the lack of distinctive character by acquisition of distinctiveness through use. That remedy is impossible in so far as the
public interest in the availability of a sign is determined in the context of Article 3(1)(e);
[(8)](#Footnote8) that is not the case if that determination is made under Article 3(1)(c).16. The parties agree that Article 3(1)(c) applies independently to three-dimensional shapes, although they disagree in part on
the significance to be attributed, in that sphere, to considerations relating to availability. Whilst the applicants in the
main proceedings claim that the need to preserve availability is exceptional in nature, the United Kingdom Government submits
that it has a limited role to play provided that a reasonable, purposive construction is given to Article 3(1)(e) and the
Commission sees no reason why that need should be applied more strictly.17. It can also be inferred from the order for reference that the Bundesgerichtshof thinks it unlikely that the assessment of
whether it is necessary to preserve the availability of a sign is carried out on the basis of Article 3(1)(e), since that
would preclude the acquisition of distinctiveness through use, which appears to it to be unjustified. Such a view also relies
on subparagraph (e) being interpreted in such a way that the ground for refusal that it contains will cease to apply as soon
as the sign displays any feature which is not dictated by the product's nature, function or substantial value.18. The Court of Justice came to a different decision in its judgment in
*Philips* .19. First, it dispelled the doubts which had existed since the judgment of 20 September 2001 in
*Procter & Gamble* v
*OHIM* ,
[(9)](#Footnote9) as to whether it is appropriate to assess, together with the obstacles related to the possible lack of distinctiveness in
the broad sense, other public-interest considerations which favour restricting registration of certain signs so that they
may be freely used by operators as a whole. The existence of such considerations had been recognised unequivocally in the
judgment of 4 May 1999 in
*Windsurfing Chiemsee* ,
[(10)](#Footnote10) although only in relation to descriptive signs falling within Article 3(1)(c).20. In its judgment in
*Philips* , the Court, whilst pointing out that the purpose of the protection afforded by a trade mark is primarily to guarantee the
trade mark as an indication of origin,
[(11)](#Footnote11) acknowledged that when the various grounds for refusal are applied, other underlying general-interest considerations may
be taken into account.
[(12)](#Footnote12) It is appropriate in each case to analyse the rationale for the refusal or nullity of registration.21. The Court found that the rationale for the ground for refusal in Article 3(1)(e) was to prevent trade mark protection from
granting its proprietor a monopoly on technical solutions or functional characteristics of a product which a user is likely
to seek in the products of competitors.
[(13)](#Footnote13)As regards, in particular, signs consisting exclusively of the shape of the product which is necessary to obtain a technical
result, mentioned in Article 3(1)(e), second indent, the Court pointed out that the aim of the provision was to preclude the
registration of shapes to the extent to which they perform a technical function, because the exclusivity inherent in the trade
mark right would limit the possibility of competitors supplying a product incorporating such a function or at least limit
their freedom of choice in regard to the technical solution they wished to adopt in order to incorporate such a function in
their product.
[(14)](#Footnote14)In the sphere of three-dimensional shape-of-product signs, the importance of the interest in preserving availability was thus
acknowledged.22. Second, and on the basis of such considerations of general interest, which dictate that certain signs may be freely used by
all, the Court proceeded to set out the conditions in which the second indent of Article 3(1)(e) of the Directive applies,
declaring it applicable provided that a shape possesses
*essential characteristics* which perform a technical function and were chosen to fulfil that function.
[(15)](#Footnote15) It follows that, if this ground for refusal is to be surmounted, it is not sufficient that certain elements of the sign are
not intended to obtain a technical result.That reasoning can logically be extended to the other cases referred to in Article 3(1)(e) and consequently registration is
also refused when the essential characteristics of a three-dimensional sign consisting of the shape of the product result
from the nature of the product or give the product substantial value.23. For the remainder, the principles relating to the need to preserve availability in the domain of Article 3(1)(c), as formulated
in
*Windsurfing Chiemsee* , continue to apply.24. The Court stated in that instance that Article 3(1)(c) of the Directive pursues a general-interest aim which requires that
descriptive signs or indications may be freely used by all, including as collective marks or as part of complex or graphic
marks. Article 3(1)(c) therefore prevents such signs and indications from being reserved to one undertaking alone because
they have been registered as trade marks.
[(16)](#Footnote16)25. As regards indications of geographical origin, the Court found that it is in the general interest that they remain available
because they may be an indication of the characteristics of the products concerned, and may give rise to a favourable response,
[(17)](#Footnote17) a reasoning which applies
*mutatis mutandis* to descriptive signs as a whole.
[(18)](#Footnote18)26. The Court thus stated that underlying Article 3(1)(c) was a requirement that any assessment should be guided by the general
interest in preserving the availability of certain signs.27. So no legislative provision requires three-dimensional signs consisting of the shape of the product to be treated differently,
which suggests that they are to remain subject to a multifaceted examination of whether they are eligible to be registered
as trade marks.28. First, they must satisfy the abstract requirements of Article 2 of the Directive: they must be capable of being represented
graphically and must have the capacity to have distinctive character.29. Furthermore, and above all, they must not fall within the ground for refusal in Article 3(1)(e). So far as three-dimensional
shapes are concerned, it is in general under that provision that considerations of availability are invoked. On that point,
I share the view of the United Kingdom Government and disagree with the court making the reference: the purpose of excluding
from trade mark protection three-dimensional signs which are exclusively dictated by the nature of the product, by the need
for a technical result or by the need to give substantial value, reflects the
*paramount concern* not to permit individuals to use trade marks to perpetuate exclusive rights over natural forms, technical developments or
aesthetic designs. In keeping with that logic, the legislature did not include subparagraph (e) among the grounds for refusal
which may be cured by virtue of the first sentence of Article 3(3). Natural, functional and ornamental shapes are incapable,
by express intention of the legislature, of acquiring distinctive character.The judgment in
*Philips* , in not accepting the narrowest definition of this ground for refusal ─ which is the one adopted by the Bundesgerichtshof
in its decision ─ confirms the importance of the role of that ground.It cannot be denied that that interpretation means that many unadorned signs (
softline, according to the description in the decision of the Bundespatentgericht) will never be eligible for registration but in
my view that consequence is not disproportionate: the public interest should not have to tolerate even a slight risk that
trade mark rights unduly encroach on the field of other exclusive rights which are limited in time, whilst there are in fact
other effective ways in which manufacturers may indicate the origin of a product (addition of arbitrary features to a three-dimensional
shape, innovative arrangement of the whole, word and figurative marks).30. If that ground for refusal, as thus interpreted, does not apply, it is necessary to consider whether the sign concerned is
actually distinctive in the light of Article 3(1)(b), (c) and (d) of the Directive.The assessment under Article 3(1)(e) of the Directive of the need to preserve availability does not preclude or prejudge a
further examination, where appropriate, which is also guided by the objective that availability should be preserved and which
is carried out under Article 3(1)(c). Its nature is distinct: the present or future interest of other operators in using the
sign as a descriptive indication has to be weighed against the relative need of the owner to use that type of trade mark in
order to make known the trade origin. The fact that the mark claimed has acquired distinctiveness through use may have an
impact on the end result of this second assessment of the need to preserve availability ─ contrary to the case of the first
assessment.31. I acknowledge that many three-dimensional shape-of-product signs will probably not succeed in overcoming the various obstacles
to registration.32. Consequently, the answer to the second question referred to the Court must be that, in assessing whether the essential characteristics
of a three-dimensional sign consisting of the shape of the product result from the nature of the product itself, from the
need to obtain a technical result or from the need to give substantial value to the product, it is necessary to take into
account the general interest in preserving the availability of the sign concerned for operators as a whole. That assessment
does not prevent the sign, if it is descriptive, from being subject to a further assessment of the need to preserve availability
under Article 3(1)(c) of the Directive. Only the result of the second assessment may be influenced by a finding that distinctiveness
has been acquired through use in accordance with the first sentence of Article 3(3) of the Directive.Conclusion33. For the reasons set out above, I suggest that the Court of Justice should reply to the questions referred by the Bundesgerichtshof
as follows:(1) Article 3(1)(b) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating
to trade marks is not to be interpreted as requiring a stricter test of distinctive character for a three-dimensional sign
depicting the shape of the product than for the other types of trade marks referred to in Article 2.(2) In assessing whether the essential characteristics of a three-dimensional sign consisting of the shape of the product result
from the nature of the product itself, from the need to obtain a technical result or from the need to give substantial value
to the product, it is necessary to take into account the general interest in preserving the availability of the sign concerned
for operators as a whole. That assessment does not prevent the sign, if it is descriptive, from being subject to a further
assessment of the need to preserve availability under Article 3(1)(c) of Directive 89/104. Only the result of the second assessment
may be influenced by a finding that distinctiveness has been acquired through use in accordance with the first sentence of
Article 3(3) of Directive 89/104.

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[1](#Footref1) –
:   Original language: Spanish.

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[2](#Footref2) –
:   Case C-299/99 [2002] ECR I-5475 (
    *Philips* ).

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[3](#Footref3) –
:   First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks
    (OJ 1989 L 40, p. 1) (
    the Directive or
    the Trade Mark Directive).

---

[4](#Footref4) –
:   Gesetz zur Reform des Markenrechts und zur Umsetzung der ersten Richtlinie 89/104/EWG des Rates vom 21. Dezember 1988 zur
    Angleichung der Rechtsvorschriften der Mitgliedstaaten über die Marken (
    *Bundesgesetzblatt* I, p. 3082).

---

[5](#Footref5) –
:   Which is not to be confused with
    capable of distinguishing or
    *potential distinctive character* (Article 2 of the Directive) or
    *acquired distinctive character* (Article 3(3)).

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[6](#Footref6) –
:   Paragraph 48 of the judgment in
    *Philips* .

---

[7](#Footref7) –
:   Which the referring court describes as
    the interest of the trade in having the shape of the product available for use but which includes any consideration of public interest which militates in favour of restricting registration of certain
    signs in order that they may be freely used by operators as a whole.

---

[8](#Footref8) –
:   On account of Article 3(3), first sentence. See also paragraph 75 of the
    *Philips* judgment.

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[9](#Footref9) –
:   Case C-383/99 [2001] ECR I-6251 (
    the
    *Baby-dry* judgment).

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[10](#Footref10) –
:   Joined Cases C-108/97 and C-109/97 [1999] ECR I-2779.

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[11](#Footref11) –
:   Paragraph 29.

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[12](#Footref12) –
:   Paragraph 77.

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[13](#Footref13) –
:   Paragraph 78.

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[14](#Footref14) –
:   Paragraph 79.

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[15](#Footref15) –
:   Paragraph 80.

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[16](#Footref16) –
:   . *Windsurfing Chiemsee* , paragraph 25.

---

[17](#Footref17) –
:   Ibid., paragraph 26.

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[18](#Footref18) –
:   As may be inferred from the wording of paragraph 26 of
    *Windsurfing Chiemsee* (
    more particularly) and from the general tenor of paragraph 35.

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