CELEX: 62005CC0301
Language: en
Date: 2007-06-07
Title: Opinion of Advocate General Sharpston delivered on 7 June 2007. # Hans-Peter Wilfer v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM). # Appeal - Community trade mark - Word sign ‘ROCKBASS’ - Refusal to register - No need to adjudicate. # Case C-301/05 P.

OPINION OF ADVOCATE GENERAL
      Sharpston
      delivered on 7 June 2007 (1)
      
      Case C-301/05 P
      Hans-Peter Wilfer
      
      (Appeal – Community trade mark – Word mark ROCKBASS – Refusal to register – Admission of evidence by the Court of First Instance – Whether mark descriptive)1.     The present appeal against the judgment of the Court of First Instance in Case T-315/03 Wilfer v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) (2) raises a number of issues, including the correct interpretation and application of the concept of descriptiveness for the
         purpose of Article 7(1)(c) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (‘the Regulation’). (3)
      
      
       The Regulation
      2.     Article 7(1) of the Regulation lists what are known as the ‘absolute’ grounds for refusal of registration of a trade mark.
         Absolute grounds automatically preclude registration, in contrast to ‘relative’ grounds (such as similarity between the proposed
         mark and an existing mark) which may or may not preclude registration depending on the circumstances.
      
      3.     Article 7(1) provides in so far as is relevant:
      ‘The following shall not be registered:
      …
      (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.’
      
      4.     I shall refer to signs or indications falling within Article 7(1)(c) as ‘descriptive’.
      5.     In interpreting Article 7(1)(b) and (c) of the Regulation, account should also be taken of the Court’s case-law on the interpretation
         of the identically-worded Article 3(1)(b) and (c) of the Trade Marks Directive. (4)
      
      6.     Article 59 of the Regulation provides:
      ‘Notice of appeal must be filed in writing at the Office within two months after the date of notification of the decision
         appealed from.  … Within four months after the date of notification of the decision, a written statement setting out the grounds
         of appeal must be filed.’
      
      7.     Article 63(1) to (3) of the Regulation provides:
      ‘1.   Actions may be brought before the Court of Justice against decisions of the Boards of Appeal on appeals.
      2.     The action may be brought on grounds of lack of competence, infringement of an essential procedural requirement, infringement
         of the Treaty, of this Regulation or of any rule of law relating to their application or misuse of power.
      
      3.     The Court of Justice has jurisdiction to annul or to alter the contested decision.’ (5)
      
      8.     Article 74 of the Regulation provides:
      ‘1.   In proceedings before it the Office shall examine the facts of its own motion;  however, in proceedings relating to relative
         grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments
         provided by the parties and the relief sought.
      
      2.     The Office may disregard facts or evidence which are not submitted in due time by the parties concerned.’
      
       Background to the appeal
      9.     In October 2001 Mr Wilfer applied to register the word mark ROCKBASS as a Community trade mark in respect of ‘Technical sound
         equipment, mixing desks, sound effect equipment, amplifiers, loudspeaker boxes, active loudspeaker boxes (combos);  containers,
         cases and bags for the aforesaid goods’;  ‘Musical instruments, in particular guitars, electric guitars, bass guitars, acoustic
         guitars, guitar accessories, namely strings, frets, truss rods and straps;  containers, cases and bags for the aforesaid goods’;
         and ‘Containers, cases and bags’. (6)  On 11 March 2002 the examiner refused the application pursuant to Article 7(1)(b) and (c) of the Regulation.  On 25 March
         2002 Mr Wilfer appealed to the First Board of Appeal of OHIM (‘the Board of Appeal’).  On 3 July 2002 he lodged a written
         statement setting out the grounds of that appeal and on 2 July 2003 he lodged an additional written statement containing a
         declaration by Mr Roesberg, a music magazine editor, and information on registrations of the ROCKBASS trade mark in Canada,
         Australia and New Zealand.
      
      10.   By decision of 11 July 2003 (‘the contested decision’) the Board of Appeal dismissed the appeal under Article 7(1)(c) of the
         Regulation.  Essentially, the Board of Appeal held that for the relevant public, composed of music specialists, the word ‘rockbass’
         made reference to the bass guitar, which lends itself in particular to playing rock music, and also designated a bass guitar
         technique – ‘rock bass’.  It therefore took the view that the word mark ROCKBASS was directly descriptive of musical instruments
         and their accessories, and of the other goods specified in the application, in so far as their descriptions include goods
         used in connection with bass guitars.
      
      11.   Mr Wilfer sought annulment of the contested decision before the Court of First Instance, raising four pleas in law:  failure
         by OHIM to examine facts of its own motion in contravention of the first sentence of Article 74(1) of the Regulation, failure
         to take into account evidence submitted by Mr Wilfer, and infringement of Article 7(1)(b) and (c) of the Regulation.
      
      12.   The Court of First Instance dismissed the action in its entirety.  In so far as is relevant to the appeal, the judgment of
         the Court of First Instance is summarised below under the grounds of appeal to which it relates.
      
      
       The appeal
      13.   Mr Wilfer has raised seven grounds of appeal.
      
       The first ground of appeal
      14.   In the judgment under appeal, the Court of First Instance refused the request made by Mr Wilfer at the hearing that it be
         noted that he was represented jointly by a lawyer and a Patentanwalt, or, in the alternative, that he was represented by a
         lawyer assisted by a Patentanwalt.  Under Article 19 of the Statute of the Court of Justice, only a lawyer authorised to practise
         before a court of a Member State or of another State which is a party to the Agreement on the European Economic Area may represent
         or assist parties other than the States and institutions referred to in the first and second paragraphs of that article. (7)
      
      15.   Mr Wilfer’s first ground of appeal is that the Court of First Instance erroneously interpreted Article 19 of the Statute of
         the Court of Justice in rejecting his request to be jointly represented by his patent agent.
      
      16.   Since, however, Mr Wilfer withdrew his first ground of appeal at the hearing, I do not propose to consider the issue further.
      
       The second ground of appeal
      17.   In the judgment under appeal the Court of First Instance referred to an attestation which was lodged by Mr Wilfer at the hearing
         and which concerned the registration procedure for the ROCKBASS trade mark in the United States.  The Court noted that it
         was clear from Article 63(2) and (3) of the Regulation that decisions of the Boards of Appeal could be annulled or altered
         only where they contained a substantive or procedural irregularity and that it was settled case-law that the legality of a
         Community measure fell to be assessed on the basis of the elements of fact and of law existing at the time when the measure
         was adopted.  The legality of a decision of the Board of Appeal cannot therefore be called into question by pleading new facts
         before the Court unless it is proved that the Board of Appeal should have taken those facts into account of its own motion
         during the administrative procedure before adopting any decision in the matter.  Since the attestation lodged by Mr Wilfer
         was made after the contested decision was adopted and the evidence relating to the registration procedure for the ROCKBASS
         trade mark in the United States does not constitute a fact which the Board of Appeal should have taken into account of its
         own motion before adopting the contested decision, the attestation cannot call into question the legality of that decision
         and must therefore be excluded from the proceedings. (8)
      
      18.   Mr Wilfer’s second ground of appeal is that in refusing to take into account that attestation, the Court of First Instance
         erred in the application of the first sentence of Article 74(1) and Article 7(1)(b) and (c) of the Regulation.  Whether a
         mark is registrable is relevant both when registration is sought and when it is granted.
      
      19.   At the hearing, counsel for Mr Wilfer explained that in the second ground of appeal his client was not suggesting that the
         Court of First Instance should itself have applied Article 74(1) of the Regulation.  Rather, his argument was that that Court
         had misinterpreted Article 74(1) in so far as it considered that the Board of Appeal was not required to examine of its own
         motion the fact that parallel registrations had succeeded in other jurisdictions.  That fact had been drawn to the attention
         of the Board of Appeal in the written statement lodged by Mr Wilfer on 2 July 2003. (9)
      
      20.   The relevance of that written statement is the subject-matter of the third ground of appeal, considered below.  In so far
         as concerns the second ground of appeal, which is specifically directed at paragraph 14 of the judgment of the Court of First
         Instance, I do not see how the written statement can be relevant.  In that paragraph, the Court of First Instance was ruling
         on the admissibility of the attestation lodged by Mr Wilfer at the hearing.
      
      21.   With regard to that question, there is nothing in the summary of the law set out in paragraph 13 of the judgment of the Court
         of First Instance or the application in paragraph 14 of that law to the case before it to suggest that that Court incorrectly
         interpreted or applied the law. (10)  I would accordingly dismiss the second ground of appeal as unfounded.
      
      
       The third ground of appeal
      22.   Before the Court of First Instance Mr Wilfer had submitted that the Board of Appeal had not considered his additional written
         statement of 2 July 2003 and its annexes, containing the affidavit of Mr Roesberg, a music magazine editor, and the information
         on earlier registrations of the ROCKBASS trade mark.
      
      23.   In the judgment under appeal the Court of First Instance ruled that Article 59 of the Regulation could not be construed as
         preventing new facts or evidence submitted during the hearing of an appeal on an absolute ground for refusal from being taking
         into account after the expiry of the prescribed period within which the grounds of appeal must be presented.  Article 74(2)
         of the Regulation allows the Board of Appeal discretion in taking into account additional evidence produced after that period
         has expired.  It follows that the Board of Appeal should have examined that written statement in order to ensure, at the very
         least, that it did not contain any new facts or evidence to be considered.  Therefore, in failing to consider the written
         statement the Board of Appeal made a procedural error.  However, a procedural irregularity will entail the annulment of a
         decision in whole or in part only if it is shown that had it not been for the irregularity the contested decision might have
         been substantively different. (11)  The written statement did not contain any new arguments or new evidence that was likely to affect the substance of the contested
         decision.  The affidavit was submitted only in support of two arguments already relied on by Mr Wilfer before the examiner
         and before the Board of Appeal, and hence could not have affected the substance of the contested decision.  As regards the
         information on the registrations of the ROCKBASS trade mark in Canada, Australia and New Zealand, since registrations already
         made in Member States are not a decisive factor,(12) it follows, a fortiori, that registrations made in third countries, whose legislation is not subject to Community harmonisation,
         cannot in any way serve as proof that identical criteria to those set out in Article 7(1)(c) of the Regulation were regarded
         as having been met.  The Court concluded that, since the written statement did not contain any new matters of such a kind
         as to affect the substance of the contested decision, the Board of Appeal’s failure to consider it could not result in the
         annulment of that decision. (13)
      
      24.   Mr Wilfer’s third ground of appeal is that the Court of First Instance incorrectly applied Article 74 of the Regulation and
         the case-law of the Community judicature concerning procedural errors.  The written statement of 2 July 2003 contained new
         arguments and evidence which could have affected the substance of the decision of the Board of Appeal.  If the Board of Appeal
         had taken account of that evidence, it could not have maintained its view that the word ‘rockbass’ referred to a bass guitar
         particularly suited to playing rock music.  Taking the written statement into account could therefore certainly have affected
         the substance of the contested decision.  The same applies to the information on the registrations of ROCKBASS in Canada,
         Australia, New Zealand and the United States [sic], since in the contested decision the Board of Appeal referred to English
         usage and lexical rules.  If the Board of Appeal had taken account of the assessment in English-speaking jurisdictions that
         ROCKBASS was fanciful and hence sufficiently distinctive and not purely descriptive, the contested decision could have been
         different in substance.
      
      25.   In my view, the third ground of appeal is also unfounded.  The Court of First Instance correctly interpreted Article 74(2)
         of the Regulation and correctly summarised the effect of the case-law of the Court of Justice in paragraph 33 of its judgment.
         That view is moreover borne out by the recent decision of the Court of Justice in Kaul. (14)
      
      
       The fourth, fifth and seventh grounds of appeal
      26.   The fourth, fifth and seventh grounds of appeal concern that part of the judgment of the Court of First Instance dealing with
         Mr Wilfer’s plea that the Board of Appeal had infringed Article 7(1)(c) of the Regulation in two respects.
      
      
       The judgment of the Court of First Instance
      27.   First, Mr Wilfer had cited various meanings of the component parts of the sign ROCKBASS.  He also claimed that in the English
         language the combination of words ‘rock bass’ has a specific meaning, namely the fish called the ‘rock bass’, which is extremely
         unusual in relation to the goods claimed.  The sign in question, characterised by an unusual grammatical structure and an
         ambiguous meaning, was therefore seen by the relevant public as a fanciful expression. (15)
      
      28.   The Court of First Instance ruled that the descriptive character of a sign was to be assessed in relation to the goods or
         services in respect of which registration had been sought. (16)  The Board of Appeal had rightly adopted the meanings specifically connected with the goods in question.  It follows that,
         as the Board of Appeal held, the word ‘rockbass’ designates a bass guitar which lends itself to playing rock music or, conversely,
         a style of music played with a bass guitar.  That finding cannot be called in question by the fact that the word in question
         does not appear as such in dictionaries.  A trade mark consisting of a neologism composed of elements each of which is descriptive
         of characteristics of the goods or services in respect of which registration is sought is itself descriptive, unless there
         is a perceptible difference between the neologism and the mere sum of its parts.  That assumes that, because of the unusual
         nature of the combination in relation to the goods or services, the neologism creates an impression which is sufficiently
         far removed from that produced by the mere combination of meanings lent by the elements of which it is composed. (17)  The sign ROCKBASS does not diverge from English word composition rules, since it corresponds to the syntactically correct
         juxtaposition of the two words that make it up.  There is therefore nothing unusual about the structure of the word, (18) which does not create an impression far removed from that produced by the mere combination of meanings lent by its components. (19)
      
      29.   Second, Mr Wilfer had asserted that, despite its possible descriptive connotations, the sign ROCKBASS could not constitute,
         in relation to the goods in question, a clear, plain indication that is not liable to be misunderstood.  In particular, since
         the bass guitar does not possess any particular characteristics for rock music, it does not seem natural to understand the
         term ‘rockbass’ as an indication of a particular type of bass guitar or as the description of a function of the bass guitar.
         Even if the term ‘rockbass’ indicates a bass guitar playing technique, this meaning is not descriptive of the use of the goods,
         since practically any style of music can be played on any instrument.  Consequently, the relationship between the sign and
         bass guitars is not direct, in particular because it does not relate to their essential characteristics. (20)
      
      30.   The Court of First Instance ruled that, for the application of Article 7(1)(c) of the Regulation, it was sufficient for the
         sign to be descriptive of one of the possible intended purposes of the goods at issue, which the relevant public was liable
         to take into account when making a choice and which accordingly constituted an essential characteristic thereof. (21)  It is common ground that playing rock music is one of the possible intended purposes of the goods in question.  Rock is
         a very well-known modern style which is associated with the electric guitar.  Consequently, the reference to that style, followed
         by the reference to the electric bass guitar, is liable to be taken into account when a choice of guitar is made, particularly
         if the consumer intends to play rock music.  Moreover, as the Board of Appeal has illustrated with reference to various internet
         sites, the sign composed of the words ‘rock’ and ‘bass’ is likely to be commonly used in trade to designate an electric bass
         guitar intended for playing rock music.  The question of the technical accuracy of such a designation is not pertinent from
         the point of view of the relevant consumer, who does not have particular technical knowledge.  The Court concluded that consequently,
         with regard to bass guitars, the Board of Appeal had rightly held that the sign ROCKBASS related directly to those goods,
         and to one of their intended purposes which the relevant public was liable to take into account when making a choice, and
         was therefore descriptive. (22)
      
      
       The fourth and fifth grounds of appeal
      31.   Mr Wilfer submits as his fourth ground of appeal that the Court of First Instance did not take account of other possible meanings
         of the word ‘rockbass’.  In German, the English word ‘rock’ has more than 25 different meanings and the word ‘bass’ at least
         six, of which the musical one is extremely multifactorial.  Moreover the German word ‘Rock’ has at least five different meanings
         and the word ‘Bass’ at least four.  Mr Wilfer had indicated before the Court of First Instance that the term ‘rockbass’ could
         accordingly have numerous meanings.  That Court, without giving any reasons, failed to take account of this, thereby distorting
         or falsifying Mr Wilfer’s explanation and breaching the requirement to give reasons.  Moreover, neither the contested decision
         nor the internet sites to which the Board of Appeal referred therein suggest that the term ‘rockbass’ is likely to be commonly
         used in trade to designate an electric bass guitar intended for playing rock music.  The Court of First Instance therefore
         also distorted the facts on which its judgment is based and breached the requirement to give reasons.
      
      32.   Mr Wilfer submits as his fifth ground of appeal that, in holding that the mark ROCKBASS was not unusual in structure, the
         Court of First Instance did not take into account not only that the term could have many different meanings but also that
         it had many possible grammatical permutations e.g. noun/noun, verb/adjective etc.  In ignoring this explanation, the Court
         of First Instance deformed the facts on which its judgment is based and breached the requirement to give reasons.
      
      33.   With regard to the fourth ground of appeal, it suffices to note that the Court has ruled that a word must be refused registration
         if at least one of its possible meanings designates a characteristic of the goods or services concerned. (23)
      
      34.   The same approach must in my view be applied by analogy in the context of the fifth ground of appeal.
      35.   I accordingly consider that the fourth and fifth grounds of appeal are unfounded.
      
       The seventh ground of appeal
      36.   Mr Wilfer submits as his seventh ground of appeal that the Court of First Instance infringed Article 7(1)(c) of the Regulation
         in various ways.
      
      37.   First, the stages of its analysis were in the wrong order.  At the outset the Court took into account solely the possible
         meanings which could in some way designate the characteristics of the goods claimed.  There was thus a vicious circle.  According
         to Mr Wilfer, the first stage of the analysis should be to take account of possible meanings from the point of view of an
         impartial average observer;  only at a second stage should those meanings be linked to the goods claimed.  If the Court had
         followed this approach, it would have had to take account of all the meanings of ‘rockbass’ which are obvious to the average
         impartial professional or amateur musician.  Among those obvious meanings is the fish species rock bass.
      
      38.   I do not accept that submission.  In my view, the approach of the Court of First Instance in taking into account solely the
         possible meanings which could in some way designate the characteristics of the goods claimed clearly does not perpetuate a
         vicious circle.  It is a consequence of the principle that a word must be refused registration if at least one of its possible
         meanings designates a characteristic of the goods or services concerned.  Even, therefore, if Mr Wilfer is correct in his
         assertion that among the meanings of ‘rock bass’ obvious to the average professional or amateur musician (many of whom will
         not be native English speakers) is the North American freshwater fish species rock bass, (24) that would not undermine the approach adopted by the Court of First Instance.
      
      39.   Second, Mr Wilfer submits that the Court of First Instance did not base itself on the global impression of the mark but analysed
         its component parts.  It ignored the evident imaginative and allusive meanings of ROCKBASS and instead referred to meanings
         which were in its view descriptive.  It ignored the meaning ‘style of music played with a bass guitar’ and attributed to the
         term the exclusive meaning ‘bass guitar which lends itself to playing rock music’.  It referred only to possible meanings
         flowing from the dissection of the term into two separate terms, namely ‘rock’ in the sense of rock music and ‘bass’ in the
         sense of bass guitar.  It therefore wholly ignored the general impression given by ROCKBASS.
      
      40.   I cannot accept that submission.  Admittedly, the Court of First Instance first analysed the component parts of the mark.
         That, however, is entirely consistent with the settled case-law of the Court of Justice concerning marks consisting of a neologism
         composed of elements each of which is descriptive of characteristics of the goods or services in respect of which registration
         is sought:  as a general rule, such marks are themselves descriptive. (25)  The Court of First Instance then referred to the qualification to that general rule, namely that it does not apply where
         there is a perceptible difference between the neologism and the mere sum of its parts, correctly stating that that assumes
         that, because of the unusual nature of the combination in relation to the goods or services, the neologism creates an impression
         which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it
         is composed.  The Court of First Instance then found that the sign ROCKBASS did not diverge from English word composition
         rules, since it corresponded to the syntactically correct juxtaposition of the two words that made it up.  The Court concluded
         that there was therefore nothing unusual about the structure of the word, which does not create an impression far removed
         from that produced by the mere combination of meanings lent by its components.
      
      41.   In my view, in that part of its judgment the Court of First Instance combined a faultless analysis of the case-law of the
         Court of Justice with findings of fact which cannot be reviewed on appeal.
      
      42.   Third, Mr Wilfer submits that the Court of First Instance disregarded the fact that intended purpose is not sufficient to find that a mark is directly descriptive.  It is clear from paragraph 62 of its judgment that the Court
         considered that playing rock music is one of the possible intended purposes of the goods.  It thereby concluded that that
         indication could be essential for the purchaser of a bass guitar who intended to play rock music.  It considered, however,
         that the question of the technical accuracy of such a designation was not pertinent.  The Court thereby erroneously overlooked
         the fact that in order for a circumstance to be considered to be essential by the public concerned, it is necessary for that
         public to be at least aware of its existence.  In the present case, there is nothing to suggest that the goods claimed, namely
         ‘musical instruments’ or ‘electric bass guitars’, are particularly suited to playing a given style of music.  Accordingly,
         the fact that it is possible to play a given style of music such as rockbass on certain of the goods claimed, for example
         the electric bass guitar, cannot constitute an essential characteristic of those goods, still less of other musical instruments
         claimed or of accessories.  As the Court of First Instance itself stressed in paragraph 66, a sign’s descriptiveness must
         be assessed individually by reference to each of the categories of goods claimed.
      
      43.   Mr Wilfer thus appears to be asserting that the mere fact that a word describes an intended purpose of the goods or services
         to be covered by a proposed word mark does not suffice to preclude registration of that mark on the ground that it is descriptive.
         I confess to having some difficulty understanding how that argument can withstand the most cursory examination of the wording
         of Article 7(1)(c) of the Regulation.  That provision states unequivocally that ‘trade marks which consist exclusively of
         signs or indications which may serve, in trade, to designate the … intended purpose … of the goods or service’ ‘shall not
         be registered’.
      
      44.   At the hearing counsel for Mr Wilfer emphasised that the ‘rock bass’ style of music is not a distinctive characteristic of
         goods or of musical instruments.  Again, however, I do not see how that argument assists Mr Wilfer.  It is surely self-evident
         that one of the intended purposes of a bass guitar is to play rock music.  That statement will not become less true if a given
         person buys a bass guitar with the (possibly misguided) idea of playing classical music on it.  Still less is it undermined
         by the example provided by counsel for Mr Wilfer, who argued that its logical conclusion is that the Honda Jazz trade mark
         is unregistrable because it is possible to play jazz music in cars.
      
      45.   I am accordingly of the view that the seventh ground of appeal is unfounded.
      
       The sixth ground of appeal
      46.   Before the Court of First Instance Mr Wilfer had submitted that, as far as guitar accessories are concerned, the case-law (26) required a separate examination of each category of goods or services claimed.  In the present case, the word ‘rockbass’
         has no clear link with either the essential characteristics of guitar accessories in Class 15 or the goods designated in Classes
         9 and 18. (27)
      
      47.   The Court of First Instance ruled that, in relation to containers, cases and bags in Class 18, since Mr Wilfer had not drawn
         any distinctions within this generic category the Board of Appeal’s findings were to be confirmed in so far as they related
         to all goods in that category.  With respect to the equipment in Class 9, it is clear from the arguments of the parties that
         the same equipment may be used for different instruments.  Their use in connection with the bass guitar is therefore just
         one of their possible uses.  There is a sufficiently direct and specific relationship between the sign and the goods in question
         where the technique evoked by the sign involves, or indeed requires, the use of those goods.  That technique does not merely
         constitute in this case a field in which those goods are applied but rather is one of their specific functions. (28)  Accordingly, the fact that the goods in question may also be used in another way, to which the sign in question does not
         refer, cannot undermine that finding. (29)  In the present case, even though the equipment in question is not intended to be used exclusively in connection with bass
         guitars, it is nevertheless not used autonomously in relation to the handling of electric instruments.  In addition, that
         equipment must be used in order to play the electric guitar, which is not capable of producing musical sounds on its own.
         Thus, the possibility of playing an electric bass guitar is a function of the equipment referred to in the application and
         not simply one of the many fields in which the equipment is applied.  In particular, the combined use of these two categories
         of goods is required or, at the very least, implied by their inherent characteristics. (30)
      
      48.   By his sixth ground of appeal, Mr Wilfer submits first that the Court of First Instance disregarded the fact that containers,
         cases and bags intended to transport musical instruments and their accessories fall within Class 15.  In line with this, Mr
         Wilfer’s list of goods in Class 15 included ‘containers, cases and bags adapted to the aforementioned goods’.  The ‘containers,
         cases and bags’ in Class 18 are therefore intended for any use except transporting ‘musical instruments and their accessories’.  The Court of First Instance has distorted the facts without giving
         reasons.
      
      49.   Mr Wilfer submits second that in stating that the goods in Class 9 claimed by Mr Wilfer are ‘not used autonomously in relation
         to the handling of electric instruments’, (31) the Court of First Instance distorted the facts without giving reasons.  Mr Wilfer had explained that none of the products
         mentioned in Class 9 assumed the use of a ‘musical instrument’ or ‘electric guitar’.  On the contrary, ‘technical sound equipment,
         mixing desks, sound effect equipment, amplifiers, loudspeaker boxes, active loudspeaker boxes (combos)’ can equally be used
         to transmit many other sound signals, e.g. animal cries, or video, television or radio signals.  It is therefore unrealistic
         and arbitrary to suppose that the principal function of that equipment is common use with an electric bass guitar.  That is
         so a fortiori for ‘containers, cases and bags for [technical sound equipment, mixing desks, sound effect equipment, amplifiers,
         loudspeaker boxes, active loudspeaker boxes (combos)]’ since they are not offered together with musical instruments or electric
         bass guitars but only with the products mentioned in Class 9.
      
      50.   I agree with OHIM that the first part of the sixth ground of appeal, although pleaded in terms of distortion of the facts,
         in reality seeks a reassessment of the facts found by the Court of First Instance, and indeed the Board of Appeal.  It appears
         from the contested decision that Mr Wilfer had not excluded the possibility that the containers, cases and bags in Class 18
         would be used together with guitars.  On that basis, the Board of Appeal concluded that the intended purpose of those goods
         was described by the proposed mark.  The confirmation of that finding by the Court of First Instance cannot be reviewed on
         appeal.
      
      51.   With regard to the second point, Mr Wilfer does not appear to contest the statement by the Court of First Instance that one
         of the possible uses of the equipment in Class 9 is in connection with the bass guitar.  The fact that that equipment may
         also be used in another way, to which the sign in question does not refer, does not mean that the sign is not descriptive. (32)  The Court of First Instance was therefore correct to conclude that the sign could not be registered for equipment in Class
         9.
      
      52.   I am accordingly of the view that the sixth ground of appeal is in part inadmissible and in part unfounded.
      
       Conclusion
      53.   For the reasons given above, I consider that the Court should:
      –       dismiss the appeal;
      –       order Mr Wilfer to pay the costs of the appeal.
      1 –	Original language: English.
      
      2 –	[2005] ECR II-1981.
      
      3 –	OJ 1994 L 11, p. 1.
      
      4 –	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).  In the context of other substantially identical provisions of Directive 89/104 and the Regulation,
         the Court has made it clear that its interpretation of one provision must also apply to the other:  Case C-425/98 Marca Mode
         [2000] ECR I-4861, paragraphs 26 to 28.
      
      5 –	The 13th recital to the Regulation states that the jurisdiction which the Regulation confers on the Court of Justice to cancel and
         reform decisions of the appeal courts is to be exercised at the first instance by the Court of First Instance in accordance
         with Council Decision 88/591/ECSC, EEC, Euratom of 24 October 1988 establishing a Court of First Instance of the European
         Communities (OJ 1988 L 319, p. 1), as amended by Decision 93/350/Euratom, ECSC, EEC of 8 June 1993 (OJ 1993 L 144, p. 21).
      
      6 –	In, respectively, Classes 9, 15 and 18 of the Nice Agreement concerning the International Classification of Goods and Services
         for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended.
      
      7 –	Paragraphs 10 and 11 of the judgment under appeal, citing the order of the Court of First Instance in Case T-14/04 Alto de Casablanca v OHIM (Veramonte) [2004] ECR II-3077, paragraph 9, and the case-law there cited.
      
      8 –	Paragraphs 12 to 14 of the judgment under appeal, citing Case T-222/02 HERON Robotunits v OHIM (ROBOTUNITS) [2003] ECR II-4995, paragraphs 50 and 51, and the case-law there cited.
      
      9 –	See point 9 above.
      
      10 –	See also paragraph 54 of the judgment of the Court of Justice in Case C-29/05 P OHIM v Kaul, delivered on 13 March 2007, which confirms the understanding of the Court of First Instance in the present case.
      
      11 –	Citing Joined Cases 209/78 to 215/78 and 218/78 Van Landewyck and Others v Commission [1980] ECR 3125, paragraph 47, Case C-142/87 Belgium v Commission [1990] ECR I-959, paragraph 48, and Case C-447/02 P KWS Saat v OHIM [2004] ECR I-10107, paragraphs 47 to 50.
      
      12 –	Case T-393/02 Henkel v OHIM [2004] ECR II-4115, paragraph 46, and the case-law there cited.
      
      13 –	Paragraphs 28 to 36 of the judgment under appeal.
      
      14 –	Cited in footnote 10;  see in particular paragraphs 42, 43 and 63.
      
      15 –	See paragraph 39 of the judgment under appeal.
      
      16 –	ROBOTUNITS, cited in footnote 8, paragraph 41.
      
      17 –	Citing, in connection with Directive 89/104, Case C-363/99 Koninklijke KPN Nederland [2004] ECR I-1619, paragraph 100, and Case C-265/00 Campina Melkunie [2004] ECR I-1699, paragraph 43.
      
      18 –	Case T-356/00 DaimlerChrysler v OHIM (CARCARD) [2002] ECR II-1963, paragraph 29, and ROBOTUNITS, cited in footnote 8, paragraph 39.
      
      19 –	Paragraphs 56 to 60 of the judgment under appeal.
      
      20 –	See paragraphs 40 and 41 of the judgment under appeal.
      
      21 –	ROBOTUNITS, cited in footnote 8, paragraph 44, and Case T-311/02 Lissotschenko and Hentze v OHIM (LIMO) [2004] ECR II-2957, paragraph 41.
      
      22 –	Paragraphs 61 to 63 of the judgment under appeal.
      
      23 –	Case C-191/01 OHIM v Wrigley [2003] ECR I-12447, paragraph 32;  see also, with regard to the Trade Marks Directive, Campina Melkunie, cited in footnote 17, paragraph 38.
      
      24 –	Ambloplites rupestris;  in French, perche des roches, crapet de roche or rouget de roche;  in German, gemeiner Felsenbarsch
         or gemeiner Sonnenbarsch.
      
      25 –	See the cases referred to by the Court of First Instance and cited in footnote 17.  See also, with regard to the Regulation,
         the judgment delivered on 19 April 2007 in Case C-273/05 P Celltech, paragraph 77.
      
      26 –	Case T-219/00 Ellos v OHIM(ELLOS) [2002] ECR II-753, paragraph 41.
      
      27 –	See paragraph 42 of the judgment under appeal.
      
      28 –	Case T-106/00 Streamserve v OHIM (STREAMSERVE) [2002] ECR II-723, paragraph 44.
      
      29 –	ROBOTUNITS, cited in footnote 8, paragraph 47.
      
      30 –	Paragraphs 70 to 73 of the judgment under appeal.
      
      31 –	Paragraph 73.
      
      32 –	See point 33 above.