CELEX: 62001CJ0053
Language: en
Date: 2003-04-08 00:00:00
Title: Judgment of the Court of 8 April 2003. # 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.

Joined Cases C-53/01 to C-55/01 Proceedings brought by Linde AG, Winward Industries Inc. and Rado Uhren AG(References for a preliminary ruling from the Bundesgerichtshof)
         
            «(Approximation of laws – Trade marks – Directive 89/104/EEC – Grounds for refusal to register – Article 3(1)(b), (c) and (e) – Three-dimensional shape of product mark – Distinctive character – Preserving the availability of certain signs in the public interest)»
            
               
                  Opinion of Advocate General Ruiz-Jarabo Colomer delivered on 24 October 2002 
                     
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                  Judgment of the Court, 8 April 2003  
                     
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            Summary of the Judgment
         
         
                  1..
                  Approximation of laws – Trade marks – Directive 89/104 – Where registration of a trade mark may be refused or the trade mark declared invalid – Trade mark devoid of distinctive character –   Determination whether a three-dimensional shape of product trade mark has a distinctive character – Application of the same criteria as for other types of mark  (Council Directive 89/104, Art. 3(1)(b) and 3(3)) 
         
                  2..
                  Approximation of laws – Trade marks – Directive 89/104 – Where registration of a trade mark may be refused or the trade mark declared invalid – Three-dimensional shape of product marks – Specific grounds for refusal in Article 3(1)(e) – Preliminary obstacle not preventing the application of the other grounds for refusing registration – Examination of the grounds for refusal in Article 3(1)(c) – Account taken of the public interest in preserving the availability of certain marks  (Council Directive 89/104, Art. 3(1)(c) and (e) and 3(3)) 
         
         1.
          When assessing the distinctiveness of a three-dimensional shape of product trade mark for the purposes of Article 3(1)(b)
         of First Directive 89/104 relating to trade marks, a stricter test than that used for other types of trade mark must not be
         applied. It is nevertheless true that, in view of the test for assessing distinctiveness, it may in practice be more difficult to establish
         distinctiveness in relation to a shape of product mark than a word or figurative trade mark. But whilst that may explain why
         such a mark is refused registration, it does not mean that it cannot acquire distinctive character following the use that
         has been made of it and thus be registered as a trade mark under Article 3(3) of the directive.  see paras 48-49, operative part 1
         
         2.
          The specific grounds for refusing the registration of certain signs consisting of the shape of the product set out expressly
         in Article 3(1)(e) of First Directive 89/104 relating to trade marks constitute a preliminary obstacle liable to prevent such
         signs from being registrable. However, even if that preliminary obstacle is overcome, neither the wording of Article 3(1)
         of the directive nor the scheme of the directive indicates that the other grounds for refusing registration in that provision
         should not also apply to applications to register three-dimensional shape of product marks.  It follows that, independently of Article 3(1)(e) of the directive, Article 3(1)(c) also has significance for three-dimensional
         shape of product trade marks. When examining the ground for refusing registration in Article 3(1)(c) in a concrete case, regard must be had to the public
         interest underlying that provision, which is that all three-dimensional shape of product trade marks which consist exclusively
         of signs or indications which may serve to designate the characteristics of the goods or service within the meaning of that
         provision should be freely available to all and, subject always to Article 3(3) of the directive, cannot be registered. see paras 65-66, 70, 77, operative part 2
      

      
      
      
      
      
      
      
      
      
      
      
      
      
      
      
            
            JUDGMENT OF THE COURT8 April 2003  (1)
         
         
            
         
               ((Approximation of laws – Trade marks – Directive 89/104/EEC – Grounds for refusal to register – Article 3(1)(b), (c) and (e) – Three-dimensional shape of product mark – Distinctive character – Preserving the availability of certain signs in the public interest))
               
            In Joined Cases C-53/01 to C-55/01, 
            REFERENCES to the Court under Article 234 EC by the Bundesgerichtshof (Germany) for a preliminary ruling in the proceedings
            pending before that court between
            
            
            
             Linde AG   (C-53/01), Winward Industries Inc.   (C-54/01),and
            
            
            
            
             Rado Uhren AG   (C-55/01),
            
            
            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 (OJ 1989 L 40, p. 1),
            
            THE COURT,,
            
            composed of: G.C. Rodríguez Iglesias, President, J.-P. Puissochet, R. Schintgen and C.W.A. Timmermans, Presidents of Chamber, C. Gulmann, D.A.O. Edward, A. La Pergola, V. Skouris, F. Macken (Rapporteur), J.N. Cunha Rodrigues, and A. Rosas, Judges, 
            
            Advocate General: D. Ruiz-Jarabo Colomer, Registrar: H. von Holstein, Deputy Registrar, 
            
            
            after considering the written observations submitted on behalf of:
               
               
               ─
               Linde AG, by H. Messer and C. von Mettenheim, Rechtsanwälte (C-53/01),  
               
               
               ─
               Winward Industries Inc., by M. Schaeffer, Rechtsanwalt (C-54/01), 
               
               
               ─
               Rado Uhren AG, by D. von Schultz,Rechtsanwalt (C-55/01), 
               
               
               ─
               the Austrian Government, by H. Dossi, acting as Agent (C-53/01 to C-55/01), 
               
               
               ─
               the United Kingdom Government, by R. Magrill, acting as Agent, assisted by D. Alexander, Barrister (C-53/01 to C-55/01), 
               
               
               ─
               the Commission of the European Communities, by N.B. Rasmussen and P.F. Nemitz, acting as Agents (C-53/01 to C-55/01), 
               
               
            
            
            having regard to the Report for the Hearing,
            
            after hearing the oral observations of Winward Industries Inc., represented by M. Schaeffer, Rado Uhren AG, represented by
               D. von Schultz,the United Kingdom Government, represented by P. Ormond, acting as Agent, assisted by M. Tappin, Barrister,
               and the Commission, represented by N.B. Rasmussen and P.F. Nemitz, at the hearing on 17 September 2002,
            
            
            after hearing the Opinion of the Advocate General at the sitting on 24 October 2002, 
         gives the following
         
         
         Judgment
         1
            
         By orders of 23 November 2000, received at the Court on 8 February 2001, the Bundesgerichtshof (Federal Court of Justice)
         referred for a preliminary ruling under Article 234 EC two 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
         (OJ 1989 L 40, p. 1, hereinafter  
         the Directive). 
         
         
         2
            
         Those questions were raised in three sets of proceedings between Linde AG (hereinafter  
         Linde), Winward Industries Inc. (hereinafter  
         Winward) and Rado Uhren AG (hereinafter  
         Rado) on the one hand, and the Deutsches Patent- und Markenamt (German patent and trade mark office) on the other, relating to
         the latter's refusal of the trade mark applications filed by those companies for lack of distinctive character. 
         
            
               Legal background  
            Community legislation
         
         
         3
            
         According to the first recital in the preamble to the Directive, the purpose of the Directive is to approximate the laws of
         Member States so as to abolish the disparities which may impede the free movement of goods and freedom to provide services
         and may distort competition within the common market. 
         
         
         4
            
         Article 2 of the Directive, entitled  
         Signs of which a trade mark may consist, provides as follows: A trade mark may consist of 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.
         
         
         5
            
         Article 3 of the Directive, which sets out the grounds for refusal or invalidity, provides as follows: 
         
         1.
          The following shall not be registered or if registered shall be liable to be declared invalid: 
         
         
         (a)
         signs which cannot constitute a trade mark;  
         
         
         (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; 
         
         
         (d)
         trade marks which consist exclusively of signs or indications which have become customary in the current language or in the
         bona fide and established practices of the trade;  
         
         
         (e)
         signs which consist exclusively of:  
         
         
         
               ─
                  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 which gives substantial value to the goods; 
               
         
         ...
         
         3.
          A trade mark shall not be refused registration or be declared invalid in accordance with paragraph 1(b), (c) or (d) if, before
         the date of application for registration and following the use which has been made of it, it has acquired a distinctive character.
          Any Member State may in addition provide that this provision shall also apply where the distinctive character was acquired
         after the date of application for registration or after the date of registration.
         ...
         Domestic legislation
         
         
         6
            
         Paragraph 3 of the Gesetz über den Schutz von Marken und sonstigen Kennzeichnungen (German Law on the Protection of Trade
         Marks and other Identification Marks) of 25 October 1994 (BGBl. 1994 I, p. 3082, hereinafter  
         the Markengesetz), which transposed the Directive into German law, and entered into force on 1 January 1995, provides as follows: (1) Any sign, particularly words, including personal names, designs, letters, numerals, acoustic signs and three-dimensional
         forms, including the shape of goods or of their packaging and other aspects of their presentation, including colours and colour
         combinations, which are capable of distinguishing the goods or services of one undertaking from those of other undertakings,
         may be protected as a trade mark.(2) Any sign which consists exclusively of a shape: 
         
         1.
          which results from the nature of the goods themselves, 
         
         
         2.
          which is necessary to obtain a technical result, or
         
         
         3.
          which gives substantial value to the goods
         may not be protected as a trade mark.
         
         
         7
            
         Under Paragraph 8(1) of the Markengesetz, signs which are eligible for protection under Paragraph 3 but are not capable of
         being represented graphically are not to be registered. 
         
         
         8
            
         Paragraph 8(2) of the Markengesetz provides as follows: The following trade marks shall be refused registration:
         
         1.
          trade marks which are devoid of any distinctive character for the goods or services;  
         
         
         2.
          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; 
         
         
         3.
          trade marks which consist exclusively of signs or indications which have become customary in the current language or in the
         bona fide and established practices of the trade; 
         ...
         
         
         9
            
         Paragraph 8(3) of the Markengesetz stipulates that the provisions of subparagraphs (1), (2) and (3) of Paragraph 8(2) are
         not to apply if, before the date of the decision on registration of the trade mark, and following the use which has been made
         of it for the goods and services in respect of which registration is sought, it has become established in the relevant trade
         circles. 
         The main proceedings and the questions referred for a preliminary ruling
         
         10
            
         The references for preliminary rulings in this case arise out of three sets of proceedings. 
         
         
         11
            
         In the first (C-53/01), Linde sought registration of a vehicle as a three-dimensional trade mark for the following goods:
          
         motorised trucks and other mobile works vehicles, particularly fork-lift trucks.  Its application was refused by the Deutsches Patent- und Markenamt for lack of distinctive character. 
         
         
         12
            
         The Bundespatentgericht (Federal Court for intellectual property matters) (Germany) dismissed an action brought by Linde against
         that refusal on the ground that the mark in question was wholly devoid of distinctive character.  It stated,  
          inter alia , as follows:  
         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 simply as a variation of a familiar shape, but as the distinctive sign of an undertaking.
         
         
         13
            
         In the second case (C-54/01), Winward sought registration of a torch as a three-dimensional trade mark.  Its application for
         registration was refused by the Deutsches Patent- und Markenamt on the basis that the mark in respect of which registration
         was sought was devoid of distinctive character within the meaning of Paragraph 8(2)(1) of the Markengesetz. 
         
         
         14
            
         Here again, the Bundespatentgericht dismissed the possibility of registration of the mark on the ground that it was devoid
         of distinctive character.  It stated as follows:  
         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.
         
         
         15
            
         The third case (C-55/01) concerns an application for registration filed by Rado for a three-dimensional trade mark already
         registered as an international trade mark under No 640 196, of which Rado is the proprietor, consisting of the graphic representation
         of a wrist watch.  Its application was refused by the Deutsches Patent- und Markenamt for lack of distinctive character and
         on the basis that there was a need to preserve availability (
         Freihaltebedürfnis). 
         
         
         16
            
         The action brought by Rado before the Bundespatentgericht was dismissed.  The court found that the three-dimensional representation
         of the watch face, with or without a time display, and segmented strap of the same width as the watch face lacked the required
         distinctive character in its specific design.  The Bundespatentgericht also found as follows:  
         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 themselves are 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. 
         
         
         17
            
         Those three judgments of the Bundespatentgericht were appealed to the Bundesgerichtshof. 
         
         
         18
            
         That court states that the outcome of the appeals depends on the interpretation of Article 3(1)(b), (c) and (e) of the Directive.
         
         
         
         19
            
         The Bundesgerichtshof takes the view that there is nothing to justify the suggestion that distinctive character in the abstract
         within the meaning of Article 2 of the Directive ought to be refused in respect of three-dimensional trade marks.  That provision
         requires that the trade mark be capable of distinguishing goods or services in the abstract.  The requirement for distinctive
         character specific to the goods or services to which the application for registration relates stems from Article 3(1)(b) of
         the Directive. 
         
         
         20
            
         The Bundesgerichtshof also takes the view that the grounds for refusal to register in Article 3(1)(e) of the Directive do
         not apply.  In that connection it considers that, as regards the trade marks sought to be registered by Linde and Rado, apart
         from those generic features of the basic shape of the products in question that result from technical requirements, the trade
         marks display a number of characteristics in their shapes which are not exclusively attributable either to the nature of the
         goods themselves or to technical considerations or considerations pertaining to their value.  In Case C-54/01 (Winward), the
         Bundesgerichtshof also observes that the trade mark at issue displays characteristics going beyond the basic shape of a torch
         that result from technical requirements, which are neither exclusively imposed by reason of the intrinsic nature of the goods
         nor essential to obtain a particular technical result. 
         
         
         21
            
         The referring court therefore considers it necessary to ascertain whether the trade marks in question in the three cases are
         devoid of any distinctive character within the meaning of Article 3(1)(b) of the Directive, or whether there is any ground
         for refusing registration under Article 3(1)(c). 
         
         
         22
            
         The order for reference in Case C-53/01 (Linde) makes it clear that, under the Bundespatentgericht's case-law on Paragraph
         8(2)(1) of the Markengesetz, which is the national provision that corresponds to Article 3(1)(b) of the Directive, three-dimensional
         shape of product trade marks are subject to more stringent criteria than other trade marks.  By way of justification for those
         more stringent criteria for distinctiveness the Bundespatentgericht points to a need to preserve the availability of shapes
         that are easily conceived of, and to the difference between trade mark rights, whose purpose is to indicate origin, and rights
         protecting creations, in particular legislation on designs and models. 
         
         
         23
            
         However, the Bundesgerichtshof states, with regard to distinctiveness, that it sees no reason to lay down more stringent requirements
         for three-dimensional trade marks consisting of the shape of the actual product than those which apply to traditional trade
         marks.  More onerous requirements as to a trade mark's distinctiveness cannot, in its view, be justified by reliance on specific
         indications that it is in the interests of the trade that the shape of the product remain available to other undertakings.
         
         
         
         24
            
         According to the referring court, the Court of Justice has also held that, when the distinctiveness of a trade mark is assessed,
         no distinction is to be made according to whether it has been shown that there is an interest in keeping a geographical indication
         free for use (see Joined Cases C-108/97 and C-109/97  
          Windsurfing Chiemsee  [1999] ECR I-2779, paragraph 48).  The interest in keeping graphic shapes generally available for use should not affect specific
         distinctiveness within Article 3(1)(b) of the Directive in any way, although that requirement may nevertheless be relevant
         in the context of Article 3(1)(c). 
         
         
         25
            
         As to the interpretation of Article 3(1)(c) of the Directive, the Bundesgerichtshof considers that this provision applies
         in its own right to all types of trade marks, that is, it applies equally to all shape of goods marks, irrespective of Article
         3(1)(e). Accordingly, the need to preserve the availability of three-dimensional shapes of products ought to be taken into
         account in the context of Article 3(1)(c), and not by construing Article 3(1)(e) broadly.  According to the Bundesgerichtshof,
         this approach means that registration as a trade mark will in most cases only be possible in respect of trade marks which
         acquire distinctive character following the use made of them, pursuant to the first sentence of Article 3(3) of the Directive.
         
         
         
         26
            
         In those circumstances the Bundesgerichtshof has decided to stay proceedings and to refer the following questions, which are
         worded identically in each of the three cases, to the Court for a preliminary ruling: 
         
         (1)
         In determining whether a three-dimensional trade mark which depicts the shape of a product has a distinctive character within
         the meaning of Article 3(1)(b) of the 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 the first sentence of Article 3(3) of the Directive?
         
         
         
         27
            
         The three cases were joined by order of the President of the Court of 15 March 2001 for the purposes of the written procedure,
         the hearing and judgment. 
         The first question
         
         28
            
         By its first question the national court is asking whether, when assessing the distinctiveness of a three-dimensional trade
         mark consisting of the shape of a product (hereinafter  
         shape of product mark) for the purposes of Article 3(1)(b) of the Directive, a more stringent test must be applied than that used for other types
         of trade mark. 
         Observations submitted to the Court
         
         
         29
            
         Winward and Linde submit that, in terms of distinctiveness, protection of three-dimensional shape of product marks cannot
         be subject to stricter conditions than those that apply to other types of trade mark. 
         
         
         30
            
         According to Winward, the Court has already refused to impose additional conditions regarding distinctiveness based on the
         need to preserve availability (see  
          Windsurfing Chiemsee , paragraph 48). 
         
         
         31
            
         Winward and Rado argue that there ought to be a uniform test for examining all types of trade mark to determine whether a
         sign is capable of distinguishing the goods or services of one undertaking from those of other undertakings.  Article 3(1)(e)
         is the only provision in the Directive to contain an express derogation for three-dimensional marks.  Article 3(1)(b), in
         contrast, does not draw any distinction between shape of product marks and other types of mark.  It is therefore not appropriate
         to apply more stringent criteria than those used for other types of trade mark when assessing the distinctiveness of a shape
         of product mark. 
         
         
         32
            
         The Austrian Government submits that where the shape of a three-dimensional sign is consistent with consumer expectations
         with regard to the shape of a product or its packaging, the relevant persons will not view that shape as an indication that
         the product originates from a particular undertaking.  According to the Austrian Government, it is not a question of setting
         a more stringent test for assessing the distinctiveness of three-dimensional trade marks; regard must rather be had to the
         fact that the variety of shapes that may be given to products and their packaging is, in certain trade sectors, likely to
         make it harder for the relevant persons to recognise the shape of a product or its packaging as a trade mark. 
         
         
         33
            
         The United Kingdom Government submits that Article 3(1)(b) of the Directive makes no distinction between marks consisting
         of the shape of a product and other signs which can constitute a trade mark within the meaning of Article 2 of the Directive.
         Article 3(1)(e) is the only provision specifically concerned with the registrability of three-dimensional signs.  On a proper
         interpretation, the Directive takes full account of the interests of the trade in preserving the shapes of the products themselves
         for use by competitors. 
         
         
         34
            
         However both the United Kingdom and the Austrian Governments argue that, whilst the test for assessing distinctiveness is
         the same for all trade marks, in practice an undertaking is likely to find it harder to establish distinctiveness in the sense
         required by Article 3(1)(b) of the Directive for a three-dimensional shape of product mark than for a word or figurative mark.
         
         
         
         35
            
         In the case of word and figurative marks, the average consumer is accustomed to understanding that words, logos and similar
         signs are likely to have a significance in denoting the trade origin of the goods to which they are applied.  In contrast,
         in the case of many products their main features are influenced by their function, and there are therefore many similarities
         between products of the same type, such that no product stands out particularly.  In addition a shape's distinctiveness must
         also be assessed in the context of the normal range of variations for the product in question.  If the different features
         of the shape fall within the normal range of variation of the product, the United Kingdom Government argues that it is unlikely
         that the shape will be accorded trade mark significance by the average consumer. 
         
         
         36
            
         The Commission submits that, apart from Article 3(1)(e) of the Directive, which prohibits the registration of shapes of products
         where the undertaking could monopolise the shape to the detriment of its competitors or of consumers, the Directive does not
         contain any specific criteria as to the shapes for which registration may be sought.  When assessing a trade mark's distinctiveness
         within the meaning of Article 3(1)(b) of the Directive, it is not, therefore, appropriate to apply a test to three-dimensional
         shape of product marks that is stricter than that used for other types of mark. 
         Findings of the Court  
         
         
         37
            
         It is to be noted at the outset that Article 2 of the Directive provides that any sign may constitute a trade mark provided
         that it is, first, capable of being represented graphically and, second, capable of distinguishing the goods or services of
         one undertaking from those of other undertakings. 
         
         
         38
            
         It follows that a three-dimensional shape of product sign may in principle constitute a trade mark provided those two conditions
         are met (Case C-299/99  
          Philips  [2002] ECR I-5475, paragraph 73). 
         
         
         39
            
         Next, pursuant to the rule in Article 3(1)(b) of the Directive, trade marks which are devoid of distinctive character are
         not to be registered or if registered are liable to be declared invalid. 
         
         
         40
            
         For a mark to possess distinctive character within the meaning of that provision it must serve to identify the product in
         respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish that product
         from products of other undertakings (see  
          Philips , paragraph 35). 
         
         
         41
            
         In addition, a trade mark's distinctiveness must be assessed by reference to, first, the goods or services in respect of which
         registration is sought and, second, the perception of the relevant persons, namely the consumers of the goods or services.
         According to the Court's case-law, that means the presumed expectations of an average consumer of the category of goods or
         services in question, who is reasonably well informed and reasonably observant and circumspect (see Case C-210/96  
          Gut Springenheide and Tusky  [1998] ECR I-4657, paragraph 31, and  
          Philips , paragraph 63). 
         
         
         42
            
         Finally, the Court observed in paragraph 48 of its judgment in  
          Philips  that the criteria for assessing the distinctiveness of three-dimensional shape of product marks are no different from those
         to be applied to other categories of trade mark.  Article 3(1)(b) of the Directive makes no distinction between different
         categories of trade mark for the purposes of assessing their distinctiveness. 
         
         
         43
            
         Only Article 3(1)(e) of the Directive explicitly singles out certain shape of product signs by listing specific grounds for
         refusing their registration. Under Article 3(1)(e), signs which consist exclusively of the shape which results from the nature
         of the goods themselves, or the shape of the goods which is necessary to obtain a technical result, or the shape which gives
         substantial value to the goods cannot be registered or if registered are liable to be declared invalid. 
         
         
         44
            
         Since Article 3(1)(e) of the Directive is a preliminary obstacle that may prevent a sign consisting exclusively of the shape
         of a product from being registered, it follows that if any one of the criteria listed in that provision is satisfied, the
         sign cannot be registered as a trade mark.  Nor, furthermore, can it ever acquire a distinctive character for the purposes
         of Article 3(3) through the use made of it (see  
          Philips , paragraphs 74 to 76). 
         
         
         45
            
         However, if that preliminary obstacle is overcome, it is still necessary to ascertain whether a three-dimensional shape of
         product sign must be refused registration under one or more of the grounds for refusal set out in Article 3(1)(b) to (d).
         
         
         
         46
            
         As regards Article 3(1)(b) of the Directive, neither the scheme of the Directive nor the wording of that provision indicates
         that stricter criteria than those used for other categories of trade mark ought to be applied when assessing the distinctiveness
         of a three-dimensional shape of product mark. 
         
         
         47
            
         As paragraph 40 of this judgment makes clear, distinctive character means, for all trade marks, that the mark must be capable
         of identifying the product as originating from a particular undertaking, and thus distinguishing it from those of other undertakings.
         
         
         
         48
            
         It is nevertheless true, as the Austrian and United Kingdom Governments and the Commission rightly argue, that in view of
         the test set out in paragraphs 40 and 41 of this judgment it may in practice be more difficult to establish distinctiveness
         in relation to a shape of product mark than a word or figurative trade mark.  But whilst that may explain why such a mark
         is refused registration, it does not mean that it cannot acquire distinctive character following the use that has been made
         of it and thus be registered as a trade mark under Article 3(3) of the Directive. 
         
         
         49
            
         Having regard to the foregoing considerations, the reply to the first question must be that, when assessing the distinctiveness
         of a three-dimensional shape of product trade mark for the purposes of Article 3(1)(b) of the Directive, a stricter test than
         that used for other types of trade mark must not be applied. 
         The second question
         
         50
            
         By the first limb of its second question the national court is asking whether, independently of Article 3(1)(e) of the Directive,
         Article 3(1)(c) also has significance for three-dimensional shape of product marks. 
         
         
         51
            
         The second limb of the second question concerns two distinct situations, depending on the reply given by the Court to the
         first limb of the question. 
         
         
         52
            
         In the event that, independently of Article 3(1)(e) of the Directive, Article 3(1)(c) also has significance for three-dimensional
         shape of product marks, the national court is asking whether, for the purposes of interpreting Article 3(1)(c), regard should
         be had to the general interest of the trade in the preservation of the availability of the shape of the product, so that registration
         is in principle excluded and is as a rule possible only for marks that satisfy the conditions in the first sentence of Article
         3(3) of the Directive. 
         
         
         53
            
         If the reply to the first limb of the second question is in the negative, that is to say if Article 3(1)(e) of the Directive
         alone applies to three-dimensional shape of product marks, the national court is none the less asking whether, for the purposes
         of interpreting that provision, regard should also be had to the interests of the trade in the preservation of the availability
         of the shape of the product. 
         Observations submitted to the Court
         
         
         54
            
         Linde argues that, independently of Article 3(1)(e) of the Directive, Article 3(1)(c) is of significance in its own right
         for three-dimensional trade marks.  Any need to preserve the availability of a sign that takes account of competitors' actual
         proven requirements must be considered in the light of Article 3(1)(c), once it has been established that registration of
         the three-dimensional mark sought is not barred by an absolute need to preserve its availability under Article 3(1)(e). 
         
         
         55
            
         Linde takes the view that the need to preserve availability pertains only to certain shapes, which are imposed by technical
         or aesthetic constraints relating to the nature of a product or its packaging, namely in the area where Article 3(1)(e) of
         the Directive applies.   For other shapes of products and packaging, distinctiveness and the need to preserve availability
         can simply be examined in each individual case. 
         
         
         56
            
         Winward considers that the absolute bars to registration listed in Article 3(1)(e) of the Directive apply only where there
         is an absolute need to preserve the availability of the shape claimed.  That provision does not exhaustively set out the rules
         prohibiting the appropriation of three-dimensional shape of product marks, and it ought not to apply where the technical result
         required can be achieved by using shapes other than that for which registration is sought. 
         
         
         57
            
         According to Winward, irrespective of Article 3(1)(e), Article 3(1)(c) of the Directive also applies for shape of product
         marks, but the need to preserve availability has to be considered in the context of Article 3(1)(e). 
         
         
         58
            
         Rado, for its part, submits that, whilst Articles 3(1)(c) and (e) of the Directive pursue similar goals, namely the prevention
         of the exclusive appropriation of shapes needed by the trade for the design of identical products, the two provisions apply
         independently of one another.  However, the scope of Article 3(1)(c) is wider than that of Article 3(1)(e). 
         
         
         59
            
         Rado submits, in relation to Article 3(1)(c) of the Directive, that three-dimensional shape of product marks are subject to
         the same assessment criteria as other types of trade mark and that it should not be interpreted restrictively in such a way
         that the interest in preserving the availability of such three-dimensional marks in principle precludes their registration.
         
         
         
         60
            
         The United Kingdom Government submits that Article 3(1)(e) of the Directive is the first line of defence in preventing the
         unjustified monopolisation of the shapes of products themselves by way of trade mark law.  Article 3(1)(c) of the Directive
         has significance independently of Article 3(1)(e), in that it debars from registration signs that cannot be excluded under
         Article 3(1)(e).  However, the United Kingdom Government argues that if a purposive construction is given to Article 3(1)(e)
         of the Directive, Article 3(1)(c) is likely to be of limited applicability only.  In any event the interests of the trade
         in having the shape of products available for use are protected by the application of these two provisions of the Directive.
         
         
         
         61
            
         The Commission submits that there is nothing in the wording of the Directive to suggest that Article 3(1)(e) alone applies
         to three-dimensional shape of product marks.  Even if such marks are not refused registration under that provision, they are
         still subject to the grounds for refusal in Article 3(1)(c).  The latter provision must be applied in its own right when examining
         an application for registration of three-dimensional shape of product marks. 
         
         
         62
            
         The Commission recalls that, according to the case-law of the Court, the application of Article 3(1)(c) of the Directive does
         not depend on there being a real, current or serious need to leave a sign free under German case-law (see
          Windsurfing Chiemsee , paragraph 35).  There is no question of examining the precise conditions in that provision and then going on to take account
         of a need to preserve availability in any wider sense.  In the Commission's view the interest of the trade in keeping certain
         shapes available is already built into Article 3(1)(e) of the Directive. 
         Findings of the Court
         
         
         63
            
         As regards the first limb of the second question, according to Article 3(1)(c) of the Directive, descriptive trade marks,
         that is to say, those which consist exclusively of signs or indications which may serve, in trade, to designate the characteristics
         of the goods or services for which registration is sought, cannot be registered. 
         
         
         64
            
         Under Article 3(1)(e) of the Directive, signs which consist exclusively of 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 which gives substantial
         value to the goods are not to be registered. 
         
         
         65
            
         Those specific grounds for refusing the registration of certain signs consisting of the shape of the product set out expressly
         in Article 3(1)(e) of the Directive constitute, as paragraph 44 of this judgment makes clear, a preliminary obstacle liable
         to prevent such signs from being registrable (see  
          Philips , paragraphs 74 and 76). 
         
         
         66
            
         However, even if that preliminary obstacle is overcome, neither the wording of Article 3(1) of the Directive nor the scheme
         of the Directive indicates that the other grounds for refusing registration in that provision, including those in Article
         3(1)(c), should not also apply to applications to register three-dimensional shape of product marks. 
         
         
         67
            
         It is clear from Article 3(1) of the Directive that each of the grounds for refusal listed in that provision is independent
         of the others and calls for separate examination. 
         
         
         68
            
         It follows that if a three-dimensional shape of product trade mark is not refused registration under Article 3(1)(e) of the
         Directive, registration may still be refused if it falls within one or more of the categories set out in Article 3(1)(b) to
         (d). 
         
         
         69
            
         In regard to Article 3(1)(c) of the Directive in particular, there is nothing in principle to stop that provision applying
         to an application for a three-dimensional shape of product trade mark.  The reference to trade marks which consist exclusively
         of signs or indications which may serve to designate characteristics of the goods or service other than those expressly referred
         to in that provision is sufficiently broad to cover a wide variety of trade marks, including three-dimensional shape of product
         trade marks. 
         
         
         70
            
         Having regard to the foregoing, the reply to the first limb of the second question must be that, independently of Article
         3(1)(e) of the Directive, Article 3(1)(c) also has significance for three-dimensional shape of product trade marks. 
         
         
         71
            
         With regard to the second limb of the second question, according to the Court's case-law, the various grounds for refusing
         registration set out in Article 3 of the Directive must be interpreted in the light of the public interest underlying each
         of them (see, to that effect,  
          Windsurfing Chiemsee , paragraphs 25 to 27, and  
          Philips , paragraph 77). 
         
         
         72
            
         With regard more specifically to the second situation contemplated by the referring court relating to Article 3(1)(e) of the
         Directive, for certain three-dimensional shape of product signs, the Court has already held that the rationale of the grounds
         for refusing registration laid down in Article 3(1)(e) is 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 (see  
          Philips , paragraphs 78 to 80). 
         
         
         73
            
         According to the Court's case-law, Article 3(1)(c) of the Directive pursues an aim which is in the public interest, namely
         that descriptive signs or indications relating to the characteristics of goods or services in respect of which registration
         is applied for 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 (see, to that effect,  
          Windsurfing Chiemsee , paragraph 25). 
         
         
         74
            
         The public interest underlying Article 3(1)(c) of the Directive implies that, subject to Article 3(3), any trade mark which
         consists exclusively of a sign or indication which may serve to designate the characteristics of goods or a service within
         the meaning of that provision must be freely available to all and not be registrable. 
         
         
         75
            
         The competent authority called upon to apply Article 3(1)(c) of the Directive to such trade marks must determine, by reference
         to the goods or services for which registration is sought, in the light of a concrete consideration of all the relevant aspects
         of the application, and in particular the public interest referred to above, whether the ground for refusing registration
         in that provision applies to the case at hand.  The same concrete examination is required in the case of an application for
         registration of a three-dimensional shape of product mark.  The authority may not, however, refuse such an application as
         a matter of principle. 
         
         
         76
            
         It follows that a three-dimensional shape of product mark must, like any other category of trade mark, be examined for compliance
         with all the conditions listed in Article 3(1)(b) to (e) of the Directive, and that these must be construed and applied in
         the light of the public interest underlying each one. 
         
         
         77
            
         Having regard to the foregoing, the reply to the second limb of the second question must be that, when examining the ground
         for refusing registration in Article 3(1)(c) of the Directive in a concrete case, regard must be had to the public interest
         underlying that provision, which is that all three-dimensional shape of product trade marks which consist exclusively of signs
         or indications which may serve to designate the characteristics of the goods or service within the meaning of that provision
         should be freely available to all and, subject always to Article 3(3) of the Directive, cannot be registered. 
         
         Costs
         78
            
         The costs incurred by the Austrian and United Kingdom Governments and the Commission, which have submitted observations to
         the Court, are not recoverable. Since these proceedings are, for the parties to the main proceedings, a step in the action
         pending before the national court, the decision on costs is a matter for that court. 
         
         On those grounds, 
         
         
         
            
            THE COURT,
         
         
         in answer to the questions referred to it by the Bundesgerichtshof by orders of 23 November 2000, hereby rules: 
         
            
            1.
             When assessing the distinctiveness of a three-dimensional shape of product trade mark for the purposes of 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,
            a stricter test than that used for other types of trade mark must not be applied. 
            
            
            2.
             Independently of Article 3(1)(e) of First Directive 89/104, Article 3(1)(c) also has significance for three-dimensional shape
            of product trade marks. When examining the ground for refusing registration in Article 3(1)(c) of First Directive 89/104 in a concrete case, regard
            must be had to the public interest underlying that provision, which is that all three-dimensional shape of product trade marks
            which consist exclusively of signs or indications which may serve to designate the characteristics of the goods or service
            within the meaning of that provision should be freely available to all and, subject always to Article 3(3) of the Directive,
            cannot be registered.
            
            
                  Rodríguez Iglesias
               
               
                  Puissochet 
               
               
                  Schintgen
               
            
                  Timmermans
               
               
                  Gulmann 
               
               
                  Edward
               
            
                  La Pergola
               
               
                  Skouris 
               
               
                  Macken
               
            
                  Cunha Rodrigues
               
               
                  Rosas 
               
               
                  
               
            
                  
               
               
                  
               
               
                  
               
            
            
            
            
            
            
            
            
         
         
         Delivered in open court in Luxembourg on 8 April 2003. 
         
         
         
         
                  R. Grass 
               
               
                  G. C. Rodríguez Iglesias  
               
            
         
         
         
                  Registrar
               
               
                  President
               
            
      
      
          1 –
            
             Language of the case: German.