CELEX: 62001CC0053
Language: en
Date: 2002-10-24
Title: Opinion of Mr Advocate General Ruiz-Jarabo Colomer delivered on 24 October 2002. # Linde AG (C-53/01), Winward Industries Inc. (C-54/01) and Rado Uhren AG (C-55/01). # Reference for a preliminary ruling: Bundesgerichtshof - Germany. # Approximation of laws - Trade marks - Directive 89/104/EEC - Grounds for refusal to register - Article 3(1)(b), (c) and (e) - Threedimensional shape of product mark - Distinctive character - Preserving the availability of certain signs in the public interest. # Joined cases C-53/01 to C-55/01.

OPINION OF ADVOCATE GENERALRUIZ-JARABO COLOMER delivered on 24 October 2002  (1)
         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)
         		 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)
         		 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 proceedings
       Case C-53/01
      
      2.  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)
         		 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-54/01
      
      3.  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-55/01
      
      5.  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 ruling
      
      6.  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 Justice
      
      7.  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 referred
       The first question referred to the Court
      
      8.  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)
         		 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)
         		
      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 Court
      
      14.  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)
         		 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)
         		 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)
         		 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)
         		 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)
         		 acknowledged that when the various grounds for refusal are applied, other underlying general-interest considerations may
      be taken into account.  
      
         			(12)
         		 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)
         		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)
         		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)
         		 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)
         		
      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)
         		 a reasoning which applies  
       mutatis mutandis  to descriptive signs as a whole.  
      
         			(18)
         		
      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.
        Conclusion
      
      33.  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. 
      
      
      
       1 –
         
           Original language: Spanish.
      
      2 –
         
         Case C-299/99 [2002] ECR I-5475 (
             Philips ).
         
      
      3 –
         
         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 –
         
         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 –
         
         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)).
         
      
      6 –
         
         Paragraph 48 of the judgment in  
             Philips .
         
      
      7 –
         
         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 –
         
         On account of Article 3(3), first sentence.  See also paragraph 75 of the  
             Philips  judgment.
         
      
      9 –
         
         Case C-383/99 [2001] ECR I-6251 (
            the  
             Baby-dry  judgment).
         
      
      10 –
         
         Joined Cases C-108/97 and C-109/97 [1999] ECR I-2779.
      
      11 –
         
         Paragraph 29.
      
      12 –
         
         Paragraph 77.
      
      13 –
         
         Paragraph 78.
      
      14 –
         
         Paragraph 79.
      
      15 –
         
         Paragraph 80.
      
      16 –
         
         . Windsurfing Chiemsee , paragraph 25.
         
      
      17 –
         
         Ibid., paragraph 26.
      
      18 –
         
         As may be inferred from the wording of paragraph 26 of  
             Windsurfing Chiemsee  (
            more particularly) and from the general tenor of paragraph 35.