CELEX: 62001CC0218
Language: en
Date: 2003-01-14
Title: Opinion of Mr Advocate General Ruiz-Jarabo Colomer delivered on 14 January 2003.#Henkel KGaA.#Reference for a preliminary ruling: Bundespatentgericht - Germany.#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.#Case C-218/01.

OPINION OF ADVOCATE GENERALRUIZ-JARABO COLOMER delivered on 14 January 2003  (1)
         Case C-218/01 Henkel KGaAvDeutsches Patent- und Markenamt(Reference for a preliminary ruling from the Bundespatentgericht (Germany))
            ((Trade Mark Directive – Article 3(1)(b), (c) and (e) – Three-dimensional trade mark consisting of the packaging of goods which are normally traded in packaged form))
            
      
         
       1.  The Bundespatentgericht has referred to the Court three questions 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 marks, 
      
         			(2)
         		 vis-à-vis three-dimensional signs which consist of the shape of goods.More specifically, the Bundespatentgericht wishes to know whether, for the purposes of the abovementioned provisions, packaging
      is to be equated with contents (first question). The Bundespatentgericht also seeks guidance on the test to be applied when
      assessing the distinctive character of such signs (second question), and, with regard to the assessment to be carried out
      for the purposes of registration, on whether any relevance should be attributed to the registration practices in other Member
      States.
      
       2.  The replies to those questions can be readily deduced from existing trade mark case-law.
       Background
      
       3.  On 18 June 1998, Henkel KGaA (
      Henkel), a company which manufactures chemical products and whose registered office is in Düsseldorf, Germany, applied for registration,
      in the appropriate national register, of a packaging shape as a colour three-dimensional trade mark in respect of  
      liquid wool detergent.
      
       4.  The Trade Mark Department for Class 3 of the German Patent and Trade Mark Office (Deutsches Patent- und Markenamt) refused
      the application on the ground that the shape in question constituted a customary form of packaging for the goods in respect
      of which the trade mark application was filed, and that it was devoid of any character indicating the origin of the goods,
      which accordingly meant that it was also devoid of the necessary distinctive character.
      
       5.  Henkel appealed against the decision to refuse the application to the Federal Trade Mark and Patent Court (Bundespatentgericht),
      claiming that the trade mark applied for is distinctive in character in terms of its overall appearance, because the particular
      combination of shape and colours (elements which consumers identify as signs of origin) causes it to stand out clearly from
      competing products. The appellant also submitted the results of a survey it had commissioned, which showed that a large number
      of consumers would recognise the bottle in respect of which the application had been made as belonging to a particular detergent.Henkel also argued that the trade mark applied for was not caught by the prohibition on registering descriptive signs which
      must remain freely available to operators because the trade is not reliant on the shape and colour in question, since it is
      able to choose from a wide range of wool detergent bottles.
       The questions referred for a preliminary ruling
      
       6.  Those were the circumstances in which, on 10 April 2001, the Twenty-Fourth Chamber (Chamber dealing with trade mark appeals)
      of the Bundespatentgericht ordered that proceedings be stayed and that the following questions concerning the interpretation
      of the Trade Mark Directive be referred to the Court of Justice: 
       1.  In the case of three-dimensional trade marks which consist of the packaging of goods which are normally traded in packaged
      form (such as liquids, for example), is the packaging of the goods to be equated with the shape of the goods for the purpose
      of trade mark law in such a way that: 
      (a) the packaging of the goods is to be regarded as the shape of the goods for the purpose of Article 3(1)(e) of the Directive;
      and 
      
      (b) the packaging of the goods may serve to designate the (external) quality of the packaged goods for the purpose of Article 3(1)(c)
      of the Directive? 
      
      
       2.  In the case of three-dimensional trade marks which consist of the packaging of goods which are normally traded in packaged
      form, does the establishment of distinctive character within the meaning of Article 3(1)(b) of the Directive turn on whether
      or not the average consumer, who is reasonably well-informed and reasonably observant and circumspect, is able to recognise
      the characteristic features of the three-dimensional trade mark applied for, which differ from the norm or custom in the sector
      and are therefore decisive as regards its capability of serving as an indication of origin, even without conducting an analytical
      or comparative examination and without paying particular attention? 
      
       3.  Can the necessary assessment of distinctive character be made solely on the basis of the relevant national trade perceptions,
      without further official investigations being necessary to establish whether and to what extent identical or comparable trade
      marks have been registered or refused registration in other Member States of the European Union?
      
       Procedure before the Court
      
       7.  The order for reference was received at the Court Registry on 29 May 2001. After the conclusion of the written phase, in which
      only the Commission submitted observations, the hearing was held on 14 November 2002 and was attended by the representatives
      of the Commission and the applicant.
       Analysis of the questions referred
      
       8.  The three questions referred concern the interpretation of Article 3(1)(b), (c) and (e) of the Trade Mark Directive, which
      provide: 
       1.  The following shall not be registered or if registered shall be liable to be declared invalid:...
      (b) trade marks which are devoid of any distinctive character; 
      
      (c) 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; 
      ...
      (e) signs which consist exclusively of: 
      
      
      
            ─
                the shape which results from the nature of the goods themselves, or 
             the shape which results from the nature of the goods themselves, or 
      
      
      
      
            ─
                the shape of goods which is necessary to obtain a technical result, or 
             the shape of goods which is necessary to obtain a technical result, or 
      
      
      
      
            ─
                the shape which gives substantial value to the goods; 
             the shape which gives substantial value to the goods; 
      
      ...
      
       The first question
      
       9.  The first question concerns the treatment, for the purpose of trade mark law, of the packaging of goods which are usually
      traded in packaged form, such as liquids. The referring court asks whether, in such cases, the goods should be equated with
      the shape of their packaging and to what extent.
      
       10.  It is my opinion that, where goods are generally sold in bottled form, the packaging, rather than being  
      equated with the goods, is actually a component of the goods. Moreover, from the point of view of a consumer, the packaging is the
      only visible, distinguishable element, and therefore, for the purpose of trade mark law, it is the only relevant part of the
      goods.
      
       11.  That conclusion may appear to be contrary to Article 2 of the Directive, under which  
      any sign capable of being represented graphically, particularly words, including personal names, designs, letters, numerals,
      the shape of goods  
      or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings 
      
         			(3)
         		 may constitute a trade mark. Strictly speaking,  
      goods and  
      packaging are separate items. However, the provisions must be read in the light of the aim of the Directive, which is not, on the whole,
      notable for the technical precision of its wording. 
      
       12.  In the case of liquids, and of gases and certain granulated or highly brittle materials which do not constitute  
      bodies because they are devoid, inter alia, of a clearly defined size and form, packaging is the only shape which consumers can
      identify and which is capable of being represented graphically. For the purpose of trade mark law, the three-dimensional shape
      of such substances is the shape of the packaging in which they are displayed; therefore, in this context,  
      goods should be taken to mean the container in which they are traded.
      
       13.  Furthermore, it is not in keeping with market reality to differentiate a container from its contents by regarding the latter
      alone as  
      goods. For many articles, the way they are packaged can be a decisive factor in encouraging a purchase. The size of the packaging
      determines the quantity of goods available; its shape, their function; and its material, their weight. In the eyes of a consumer,
      those characteristics may even be more important than the real or presumed attributes of the liquid itself.
      
       14.  It follows from that identity between container and goods that, where goods are traded in packaged form, the container is
      closely associated with the shape of the goods for the purposes, inter alia, of Article 3(1)(c) and (e) of the Directive.
      
       15.  As concerns Article 3(1)(e), the identity to which I have referred is a public interest requirement, since, if packaging were
      deemed to be separate from the substance it contained, with the result that the restrictions relating to the shape  
      of the goods did not apply, as Henkel's representative submits, it would be extremely easy to circumvent the absolute prohibition which
      has hitherto applied to three-dimensional shapes which have aesthetic value or practical suitability.
      
       16.  Finally, it is also appropriate to mention ─ by way of illustration only, since they are not legally binding 
      
         			(4)
         		 ─ the joint statements of the Council and the Commission of the European Communities which are set out in the Minutes of
      the Council meeting held to mark the adoption of the Trade Mark Directive, and which include the following reference to Article 3(1)(e)
      of the Directive: The Council and the Commission consider that where goods are packaged, the expression  
      shape of goods includes the shape of the packaging.
      
       17.  In view of the matters set out above, I propose that the reply to the first question referred for a preliminary ruling should
      be that, for the purpose of Community trade mark law, where goods are normally traded in packaged form, the term three-dimensional
       
      goods should be taken to mean the shape of the packaging.
       The second question
      
       18.  By its second question, the referring court seeks a precise definition of the test to be applied by national courts when assessing
      whether a three-dimensional trade mark has distinctive character for the purpose of Article 3(1)(b) of the Directive (tangible
      distinctive character). The referring court asks whether an average consumer, who is reasonably well-informed and reasonably
      observant and circumspect, should be able to recognise the characteristic features of the shape concerned, without the need
      for analysis or comparison, and without paying particular attention.
      
       19.  Since the judgment in  
      Gut Springenheide and Tusky, 
      
         			(5)
         		 the Court has applied a general, uniform test in order to determine whether a description, trade mark or promotional description
      are liable to mislead the purchaser, which is based on the presumed expectations of an average consumer who is reasonably
      well-informed and reasonably observant and circumspect, without commissioning an expert's report or a consumer research poll. 
      
         			(6)
         		
       20.  That assessment criterion has been confirmed word for word in judgments in a variety of fields, 
      
         			(7)
         		 including, naturally, trade marks. 
      
         			(8)
         		 Furthermore, the Court recently held that the same test should be used to assess whether a sign consisting of the shape of
      goods has tangible distinctive character. 
      
         			(9)
         		 If the national court is able to assess whether a sign has the capacity to distinguish, by reference to the presumed expectations
      of an average consumer who is reasonably well-informed and reasonably observant and circumspect, it does not appear to be
      necessary to commission additional research, such as the analytical or comparative studies referred to by the Bundespatentgericht.
      Conversely, such studies do not absolve the national court from the need to exercise its own faculty of judgment based on
      the standard of the average consumer as defined in Community law. 
      
         			(10)
         		 It is also important to note that the limitation of protection to one or more classes of goods or services, and the limitation
      of protection which is created by the territorial limits on the validity of a trade mark, mean that the assessment of distinctive
      character should be made from the point of view of an average consumer of the same type of goods or services in the territory
      in which the application for registration was made.
      
       21.  There is no reason to depart from that line of reasoning where the issue specifically concerns the shape of the packaging
      of goods which are normally traded in packaged form.
      
       22.  I therefore propose that the reply to the second question should be that when examining why registration has been refused,
      under Article 3(1)(b) of the Directive, for, inter alia, a three-dimensional sign consisting of the shape of goods which are
      usually traded in packaged form, the registration authority and, where appropriate, the national court must do so from the
      perspective of an average consumer of the goods or services concerned, who is reasonably well-informed and reasonably observant
      and circumspect, without the need to commission additional analytical or comparative research.
       The third question
      
       23.  Finally, the Bundespatentgericht seeks guidance on whether the practices of registration offices and courts in other Member
      States, vis-à-vis the registration of identical or comparable trade marks, should influence the assessment of the individual
      distinctive character of the trade mark under consideration.
      
       24.  The Trade Mark Directive seeks to approximate the laws of the Member States by harmonising, rather than unifying, them. National
      administrations and courts therefore have a duty to interpret national legislation in the light of the wording and purpose
      of the Directive, in order to achieve the result pursued by the latter and thereby comply with the third paragraph of Article 249
      EC, 
      
         			(11)
         		 referring questions to the Court of Justice for a preliminary ruling where appropriate.However, there is no relationship of subordination between the Court of Justice and the national courts, or between the courts
      of the Member States. Nor is there any obligation to reach the same result, still less to apply the same principles of interpretation.
      Moreover, the expectations of the average consumer to which I have referred above can vary according to territory, from which
      it follows that the practice in a particular Member State is not binding on the authorities of another State. However, in
      the interests of prudence and mutual good faith, which are founded on the pursuit of the abovementioned aim, such practice
      ─ and, in particular, the reasoning on which it is based ─ is a helpful indication to which the competent authority may have
      regard when assessing a sign's distinctiveness. Nevertheless, there is no requirement for the competent authority to commission
      its own official enquiries in that regard.
      
       25.  In short, it is appropriate to reply to the third question that when assessing whether a sign in respect of which a trade
      mark application has been made has tangible distinctive character, the competent national authorities are not required to
      take account of practices in other Member States with regard to goods or services which are similar to those in respect of
      which the application was made.
        Conclusion
      
       26.  In the light of the foregoing considerations, I propose that the Court should reply to the questions referred by the Bundespatentgericht
      for a preliminary ruling as follows:
      (1) For the purpose of Community trade mark law, where goods are normally traded in packaged form, the term  
      goods should be taken to mean the shape of the packaging. 
      
      (2) When examining why registration has been refused, under 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, for, inter alia, a three-dimensional sign consisting
      of the shape of goods which are usually traded in packaged form, the registration authority and, where appropriate, the national
      court must do so from the perspective of an average consumer of the goods or services concerned, who is reasonably well-informed
      and reasonably observant and circumspect, without the need to commission additional analytical or comparative research. 
      
      (3) When assessing whether a sign in respect of which a trade mark application has been made has tangible distinctive character,
      the competent national authorities are not required to take account of practices in other Member States with regard to goods
      or services which are similar to those in respect of which the application was made. 
      
      
      
       1 –
         
           Original language: Spanish.
      
      2 –
         
         OJ 1989 L 40, p. 1 (
            the Trade Mark Directive or  
            the Directive).
         
      
      3 –
         
         Emphasis added.
      
      4 –
         
         Due to the fact that there is no reference to the statements in the wording of the Directive. See the judgment in Case C-292/89
             
            Antonissen [1991] ECR I-745, paragraph 18.
         
      
      5 –
         
         Case C-210/96 [1998] ECR I-4657.
      
      6 –
         
         Ibid., paragraph 31.
      
      7 –
         
         See the judgments in Case C-303/97  
            Sektkellerei Kessler [1999] ECR I-513, paragraph 36; Case C-220/98  
            Estée Lauder [2000] ECR I-117, paragraph 27; and Case C-30/99  
            Commission v  
            Ireland [2001] ECR I-4619, paragraph 32.
         
      
      8 –
         
         See the judgment in Case C-342/97  
            Lloyd Schuhfabrik [1999] ECR I-3819, paragraph 26.
         
      
      9 –
         
         Judgment in Case C-299/99  
            Philips [2002] ECR I-5475, paragraph 63.
         
      
      10 –
         
         See the Opinion of Advocate General Fennelly in  
            Estée Lauder, paragraph 29.
         
      
      11 –
         
         See, as regards harmonisation of trade marks, the judgment in Case C-63/97  
            BMW [1999] ECR I-905, paragraph 22.