CELEX: C2004/085/05
Language: en
Date: 2004-04-03 00:00:00
Title: Judgment of the Court (Sixth Chamber) of 12 February 2004 in Case C-218/01 (Reference for a preliminary ruling from the Bundespatentgericht (Germany): Henkel KGaA (Approximation of laws — Trade marks — Directive 89/104/EEC — Article 3(1)(b), (c) and (e) — Grounds for refusal to register — Three-dimensional shape-of-product mark — Distinctive character

C 85/4                   EN                          Official Journal of the European Union                                              3.4.2004
For the purposes of determining whether the ground for refusal set           First, the prior authorisation procedure must be readily accessible and
out in Article 3(1)(c) of Directive 89/104 applies to such a mark, it        capable of being completed within a reasonable time and, if it leads
is irrelevant whether or not there are synonyms capable of designating       to a refusal, the decision of refusal must be open to challenge before
the same characteristics of the goods or services referred to in the         the courts. Secondly, refusal to authorise marketing must be based on
application for registration.                                                a detailed assessment of the risk to public health, based on the most
                                                                             reliable scientific data available and the most recent results of
                                                                             international research.
(1) OJ C 233 of 12.8.2000.
                                                                             (1) OJ C 108 of 7.4.2001.
                  JUDGMENT OF THE COURT
                           (Sixth Chamber)
                                                                                               JUDGMENT OF THE COURT
                         of 5 February 2004
                                                                                                       (Sixth Chamber)
in Case C-95/01 (Reference for a preliminary ruling from
the tribunal de grande instance de Paris): John Greenham                                             of 12 February 2004
                          v Léonard Abel (1)
                                                                             in Case C-218/01 (Reference for a preliminary ruling from
(Free movement of goods — Articles 28 EC and 30 EC —                            the Bundespatentgericht (Germany): Henkel KGaA (1)
Prohibition on marketing foodstuffs to which vitamins and
minerals have been added — Justification — Proportionality)
                                                                             (Approximation of laws — Trade marks — Directive 89/
                            (2004/C 85/04)                                   104/EEC — Article 3(1)(b), (c) and (e) — Grounds for
                                                                             refusal to register — Three-dimensional shape-of-product
                                                                                                mark — Distinctive character
                     (Language of the case: French)
                                                                                                         (2004/C 85/05)
(Provisional translation; the definitive translation will be published
                    in the European Court Reports)
                                                                                                 (Language of the case: German)
In Case C-95/01: Reference to the Court under Article 234 EC                 (Provisional translation; the definitive translation will be published
by the Tribunal de grande instance de Paris (France) for a                                       in the European Court Reports)
preliminary ruling in the criminal proceedings pending before
that court against John Greenham and Léonard Abel, on the
interpretation of Articles 28 EC and 30 EC, the Court (Sixth
Chamber), composed of: V. Skouris, acting for the President of
the Sixth Chamber, C. Gulmann, J.-P. Puissochet, F. Macken                   In Case C-218/01: reference to the Court under Article 234
(Rapporteur) and N. Colneric, Judges; J. Mischo, Advocate                    EC by the Bundespatentgericht (Germany) for a preliminary
General; H. von Holstein, Deputy Registrar, has given a                      ruling in the proceedings brought before that court by Henkel
judgment on 5 February 2004, in which it has ruled:                          KGaA, on the interpretation of Article 3(1)(b), (c) and (e) of
                                                                             First Council Directive 89/104/EEC of 21 December 1988 to
                                                                             approximate the laws of the Member States relating to trade
Articles 28 EC and 30 EC must be interpreted as meaning that they            marks (OJ 1989 L 40, p. 1), the Court (Sixth Chamber),
do not preclude a Member State from prohibiting the marketing                composed of C. Gulmann, acting for the President of the
without prior authorisation of foodstuffs lawfully manufactured and          Chamber, J. N. Cunha Rodrigues, J.-P. Puissochet, R. Schintgen
marketed in another Member State, where nutrients such as vitamins           and F. Macken (Rapporteur), Judges; Advocate General:
or minerals have been added thereto other than those whose use has           D. Ruíz-Jarabo Colomer, Registrar: L. Hewlett, Principal
been declared lawful in the first Member State, provided that certain        Administrator, has given a judgment on 12 February 2004, in
conditions are satisfied.                                                    which it ruled:
 ---pagebreak--- 3.4.2004                 EN                           Official Journal of the European Union                                                C 85/5
1.    For three-dimensional trade marks consisting of the packaging                            JUDGMENT OF THE COURT
      of goods which are packaged in trade for reasons linked to the
      very nature of the goods, the packaging thereof must be
      assimilated to the shape of the goods, so that that packaging
                                                                                                       (Third Chamber)
      may constitute the shape of the goods within the meaning of
      Article 3(1)(e) of the First Council Directive 89/104/EEC of
      21 December 1988 to approximate the laws of the Member
      States relating to trade marks and may, where appropriate,                                     of 12 February 2004
      serve to designate characteristics of the packaged goods,
      including their quality, within the meaning of Article 3(1)(c) of
      that directive.
                                                                              in Case C- 330/01 P: Hortiplant SAT v Commission of the
                                                                                                 European Communities (1)
2.    For three-dimensional trade marks consisting of the packaging
      of goods which are packaged in trade for reasons linked to the          (Agriculture — EAGGF — Cancellation and request for
      very nature of the product, their distinctive character within the      repayment of financial assistance — Regulation (EEC)
      meaning of Article 3(1)(b) of Directive 89/104 must be                  No 4253/88 — Article 24(1) and (2) — Obligation on the
      assessed by reference to the perception of the average consumer         Commission to request the Member State concerned to
      of such goods, who is reasonably well informed and reasonably            submit observations before cancelling financial assistance)
      observant and circumspect. Such a trade mark must enable such
      a consumer to distinguish the product concerned from those
      of other undertakings without conducting an analytical or                                         (2004/C 85/06)
      comparative examination and without paying particular atten-
      tion.
                                                                                                 (Language of the case: Spanish)
3.    The distinctive character of a trade mark within the meaning of
      Article 3(1)(b) of Directive 89/104 may be assessed solely on           (Provisional translation; the definitive translation will be published
      the basis of national trade usage, without any need for other                              in the European Court Reports)
      administrative investigations to be undertaken in order to
      determine whether and to what extent identical trade marks
      have been registered or have been refused registration in other
      Member States of the European Union.
                                                                              In Case C-330/01 P, Hortiplant SAT established in Amposta
      The fact that an identical trade mark has been registered in one        (Spain), represented by C. Fernández Vicién and I. Moreno-
      Member State for identical goods or services may be taken into          Tapia Rivas: APPEAL against the judgment of the Court of
      consideration by the competent authority of another Member              First Instance of the European Communities (Fourth Chamber)
      State among all the circumstances which that authority must             of 14 June 2001 in Case T-143/99 Hortiplant v Commission
      take into account in assessing the distinctive character of a trade     [2001] ECR II-1665, seeking to have that judgment set aside,
      mark, but it is not decisive regarding the latter’s decision to         the other party to the proceedings being: Commission of
      grant or refuse registration of a trade mark.                           the European Communities (Agents: L. Visaggio, assisted by
                                                                              J. Guerra Fernández) with an address for service in Luxem-
                                                                              bourg, the Court (Third Chamber), composed of: J. N. Cunha
      On the other hand, the fact that a trade mark has been                  Rodrigues, acting for the President of the Third Chamber, J.-
      registered in one Member State for certain goods or services can        P. Puissochet and F. Macken (Rapporteur), Judges; S. Alber,
      have no bearing on the examination by the competent trade               Advocate General; H. von Holstein, Deputy Registrar, has
      mark registration authority of another Member State of the              given a judgment on 12 February 2004, in which it:
      distinctive character of a similar trade mark for goods or services
      similar to those for which the first trade mark was registered.
                                                                              1.    Dismisses the appeal;
                                                                              2.    Orders Hortiplant to pay the costs.
(1 ) OJ C 227, 11.8.2001.
                                                                              (1) OJ C 303 of 27.10.2001.