CELEX: 62002CO0150
Language: en
Date: 2004-02-05 00:00:00
Title: Order of the Court (Fourth Chamber) of 5 February 2004. # Streamserve Inc. v Office for Harmonisation in the Internal Market (Trade Marks and Designs). # Appeal - Community trade mark - Regulation (EC) No 40/94 - Absolute ground for refusal to register - Distinctive character - Marks consisting exclusively of descriptive signs or indications - Streamserve. # Case C-150/02 P.

Case C-150/02 P Streamserve Inc.vOffice for Harmonisation in the Internal Market (Trade Marks and Designs)
            «(Appeal – Community trade mark – Regulation (EC) No 40/94 – Absolute  ground for refusal to register – Distinctive character – Marks consisting exclusively of descriptive signs or indications – Streamserve)»
            
               
                  Order of the Court (Fourth Chamber), 5 February 2004  
                     
                
               
            
                   
               
               
            
            Summary of the Order
         
         
                  1..
                  Community trade mark – Definition and acquisition of the Community trade mark – Absolute grounds for refusal – Marks composed exclusively of signs or indications which may serve to designate the characteristics of goods or services – Aim – Requirement of free availability  (Council Regulation No 40/94, Art. 7(1)(c)) 
         
                  2..
                  Appeals – Grounds –   Review by the Court of Justice of the appraisal of the facts submitted to the Court of First Instance  – Excluded – Sign applied for as a Community trade mark  (Art. 225 EC; EC Statute of the Court of Justice, Art. 51) 
         
         1.
          By prohibiting the registration as a Community trade mark of signs or indications which may serve, in trade, to designate
         the characteristics of the goods or services for which registration is sought, Article 7(1)(c) of Regulation No 40/94 pursues
         an aim which is in the general interest, namely that such signs or indications may be freely used by all. That provision accordingly
         precludes such signs or indications being reserved to a single undertaking as a result of the registration of the trade mark.
         see paras 24-25
         
         2.
          The Court of First Instance's assessment of the facts in an action for annulment brought against the decision of a Board of
         Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs), which leads it to consider that a
         sign for which registration is sought  
         does not appear unusual for the relevant consumers, is not a point of law which is subject, as such, to review by the Court of Justice on appeal.  see paras 29-30
      

      
      
      
      
      
      
      
      
      
      
      
      
      
      
      
            
            ORDER OF THE COURT (Fourth Chamber)5 February 2004  (1)
            
            
         
         
            
         
            ((Appeal – Community trade mark – Regulation (EC) No 40/94 – Absolute ground for refusal to register – Distinctive character – Marks consisting exclusively of descriptive signs or indications – Streamserve))
            
          In Case C-150/02 P, 
         
         
         Streamserve Inc., represented by J. Kääriäinen, advokat, with an address for service in Luxembourg,
         
         
         appellant, 
         
          APPEAL against the judgment of the Court of First Instance of the European Communities (Fourth Chamber) of 27 February 2002
         in Case T-106/00  
         Streamserve v  
         OHIM (
         Streamserve) [2002] ECR II-723, seeking the annulment of that judgment in so far as the Court of First Instance held that the Second
         Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) had not infringed Article
         7(1)(c) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1) in its decision
         of 28 February 2000 refusing registration of the word  
         Streamserve as a Community trade mark, other than as regards goods in the categories  
         manuals and  
         publications (Case R-423/1999-2),
         
          the other party to the proceedings being: 
         Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by E. Joly, acting as Agent,defendant at first instance, 
         
         
         
         
         THE COURT (Fourth Chamber),
         
          composed of: J.N. Cunha Rodrigues, President of the Chamber, J.-P. Puissochet (Rapporteur) and F. Macken, Judges, 
         
          Advocate General: F.G. Jacobs, Registrar: R. Grass, 
         
         after hearing the Opinion of the Advocate General, makes the following 
         
         
         Order
         1
            
          By an application lodged at the Registry of the Court on 25 April 2002, Streamserve Inc. (hereinafter  
         the appellant) brought an appeal under Article 49 of the EC Statute of the Court of Justice against the judgment of the Court of First
         Instance in Case T-106/00  
         Streamserve v  
         OHIM (
         Streamserve) [2002] ECR II-723 (hereinafter  
         the contested judgment), seeking to have that judgment set aside in so far as the Court of First Instance held that the Second Board of Appeal of
         the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (hereinafter  
         OHIM) had not, for goods in categories other than  
         manuals and  
         publications, infringed Article 7(1)(c) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L
         11, p. 1) in its decision of 28 February 2000 refusing registration of the word  
         Streamserve as a Community trade mark (Case R-423/1999-2) (hereinafter  
         the contested decision). 
         
            
               Legal background
            
         
         2
            
          Article 4 of Regulation No 40/94 provides as follows: A Community trade mark may consist of any signs capable of being represented graphically, particularly words, including personal
         names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing
         the goods or services of one undertaking from those of other undertakings.
         
         
         3
            
          Article 7(1) of the same regulation provides as follows: 
         
         1.
          The following shall not be registered: 
         
         
         (a)
          signs which do not conform to the requirements of Article 4; 
         
         
         (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
            
          Article 12 of Regulation No 40/94 provides as follows: A Community trade mark shall not entitle the proprietor to prohibit a third party from using in the course of trade:...
         
         (b)
          indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of
         the goods or of rendering of the service, or other characteristics of the goods or service; 
         ...provided he uses them in accordance with honest practices in industrial or commercial matters.
         Facts of the dispute
         
         5
            
          On 22 August 1997, Intelligent Document Systems Scandinavia AB filed an application with OHIM for registration as a Community
         trade mark of the word  
         Streamserve for goods in Classes 9 and 16 of the Nice Agreement concerning International Classification of Goods and Services for the
         Purpose of the Registration of Marks of 15 June 1957, as revised and amended. 
         
         
         6
            
          The goods in Class 9 in respect of which registration was requested included the following products:  
         [a]pparatus for recording, transmitting and reproducing of sounds and images; data processing equipment including computers,
         computer memories, viewing screens, keyboards, processors, printers and scanners; computer programs stored on tapes, disks,
         diskettes and other machine-readable media. 
         
         
         7
            
          The goods referred to in the application for registration and within Class 16 were as follows:  
         [l]isted computer programs; manuals; newspapers and publications; education and teaching material. 
         
         
         8
            
          On 18 February 1999 the Community trade mark application was transferred into the name of the appellant. 
         
         
         9
            
          OHIM's examiner refused the application by decision of 21 May 1999 and the appellant appealed. 
         
         
         10
            
          OHIM's Second Board of Appeal dismissed that appeal by the contested decision on the ground that the word  
         Streamserve, which is made up of two English words without any additional unusual or innovative element, was descriptive of the intended
         use of the goods concerned, in this case a technique for transferring digital data from a server enabling them to be processed
         as a steady and continuous stream (a technique known as  
         streaming) and that, in those circumstances, the examiner was justified in holding that Article 7(1)(b) and (c) of Regulation No 40/94
         precluded the registration of the word as a Community trade mark. 
         The contested judgment
         
         11
            
          By an application lodged at the Registry of the Court of First Instance on 27 April 2000 the appellant brought an action against
         the contested decision.  The Court of First Instance upheld the application in part only in the contested judgment. 
         
         
         12
            
          First of all, at paragraph 36 of the contested judgment, the Court of First Instance stated that Article 7(1)(c) of Regulation
         No 40/94 pursued an aim which was in the public interest, namely that the signs and indications referred to in that provision
         should not be reserved to one undertaking alone by reason of their being registered as a mark, but can be freely used by all.
         
         
         
         13
            
          Secondly, having pointed out that the persons at whom the appellant's goods are targeted comprise average English-speaking
         consumers who use the internet and are interested in its audiovisual aspect, the Court of First Instance held, at paragraphs
         40 to 49 of the contested judgment, that the conditions for the application of Article 7(1)(c) of Regulation No 40/94 were
         met in this case.  In other words, from the viewpoint of the public addressed, there was a sufficiently direct and specific
         relation between the sign and the goods for which registration was sought. 
         
         
         14
            
          The Court of First Instance considered, on the one hand, that the word  
         Streamserve was made up of a basic verb (
         serve) and a noun (
         stream) and was therefore not unusual for the consumers concerned.  On the other hand, it found that the word  
         Streamserve referred to a technique for transferring digital data from a server, enabling them to be processed as a steady and continuous
         stream, and that this technique did not merely constitute a field in which those goods are applied but rather one of their
         specific functions. 
         
         
         15
            
          It concluded, at paragraph 49 of the contested judgment, that the word  
         Streamserve could serve to designate a characteristic of the majority of the goods listed in the application for registration and that,
         therefore, in respect of those goods, the absolute ground for refusal set out in Article 7(1)(c) of Regulation No 40/94 prevented
         its registration. 
         
         
         16
            
          Thirdly, the Court of First Instance pointed out, in regard to the same goods, that the contested decision could lawfully
         be taken on the sole basis of Article 7(1)(c) of Regulation No 40/94 and that, accordingly, the appellant's argument that
         the decision rather infringed Article 7(1)(b) of that regulation was invalid and must therefore be rejected. 
         
         
         17
            
          In contrast, the Court of First Instance found that OHIM had established neither that  
         Streamserve could be descriptive nor that it was devoid of distinctive character for goods within the categories  
         manuals and  
         publications.  It therefore annulled the contested decision in so far as it refused the application for registration of  
         Streamserve for goods within those two categories. 
         The appeal
         
         18
            
          The appellant claims that the Court should, first of all, set aside the contested judgment in so far as it upheld the contested
         decision for goods not in the categories  
         manuals and  
         publications and, secondly, annul the contested decision. It also requests that OHIM be ordered to pay the costs. 
         
         
         19
            
          OHIM contends that the appeal should be dismissed and the appellant be ordered to pay the costs. 
         
         
         20
            
          Under Article 119 of the Rules of Procedure, where the appeal is clearly unfounded, the Court may at any time, acting on a
         report from the Judge-Rapporteur, and after hearing the Advocate General, by reasoned order dismiss the appeal. 
         The first ground of appeal
         
         21
            
          By its first ground of appeal the appellant argues that the Court of First Instance erred in law in finding that Article 7(1)(c)
         of Regulation No 40/94 pursues an aim which is in the public interest, namely that the signs and indications referred to in
         that article may be freely used by all.  That statement by the Court of First Instance is not wholly reconcilable with the
         view taken by Advocate General Jacobs as expressed in his Opinion in the  
         Baby-Dry case, and accepted by the Court of Justice (Case C-383/99 P  
         Procter & Gamble v  
         OHIM [2001] ECR I-6251), to the effect that Article 7(1)(c) of Regulation No 40/94 is intended  
         not to prevent any monopolising of ordinary descriptive terms but rather to avoid the registration of descriptive brand names
         for which no protection could be available (see paragraph 78 of the Opinion).  In those circumstances, the Court of First Instance adopted a test that was too severe
         in the application of those provisions to the facts of the case. 
         
         
         22
            
          Under Article 4 of Regulation No 40/94, any signs capable of being represented graphically may constitute a Community trade
         mark provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.
         
         
         
         23
            
          Article 7(1)(c) of Regulation No 40/94 provides that 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 may not be registered. 
         
         
         24
            
          Accordingly, signs and indications which may serve, in trade, to designate the characteristics of the goods or services in
         respect of which registration is sought are, under Regulation No 40/94, deemed to be incapable, by their very nature, of fulfilling
         the trade mark's function as an indication of origin, without prejudice to the possibility of such distinctive character being
         acquired through use as provided for under Article 7(3) of Regulation No 40/94. 
         
         
         25
            
          By prohibiting the registration as a Community trade mark of signs or indications which may serve, in trade, to designate
         the characteristics of the goods or services for which registration is sought, Article 7(1)(c) of Regulation No 40/94 pursues
         an aim which is in the general interest, namely that such signs or indications may be freely used by all.  That provision
         accordingly precludes such signs or indications being reserved to a single undertaking as a result of the registration of
         the trade mark (see, in relation to the identical provisions of Article 3(1)(c) 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), Joined Cases C-108/97
         and C-109/97  
         Windsurfing Chiemsee [1999] ECR I-2779, paragraph 25, and Joined Cases C-53/01 to C-55/01  
         Linde and Others [2003] ECR I-3161, paragraph 73, and, as regards Article 7(1)(c) of Regulation No 40/94, the judgment of 23 October 2003
         in Case C-191/01 P  
         OHIM v  
         Wrigley, not yet published in the ECR). 
         
         
         26
            
          Accordingly, in finding, at paragraph 36 of the contested judgment, that Article 7(1)(c) of Regulation No 40/94 pursues an
         aim which is in the public interest, namely that the proposed signs and indications may be freely used by all, the Court of
         First Instance did not fail to take account of the objectives of those provisions and accordingly interpreted them correctly.
         
         
         
         27
            
          The grounds are therefore not vitiated by any error of law. 
         
         
         28
            
          The first ground of appeal must therefore be rejected. 
         Second ground of appeal
         
         29
            
          By its second ground of appeal the appellant argues that the Court of First Instance misinterpreted the facts in holding that
         the word  
         Streamserve did not appear unusual for the relevant consumers.  It claims that this word, made up of the verb  
         serve and the noun  
         stream, does not consist exclusively of signs or indications designating one of the characteristics of the goods concerned but is
         inventive, inasmuch as it is not used in the specific language of computers and the internet to designate the goods referred
         to in the application for registration or any of their characteristics. 
         
         
         30
            
          First of all, in claiming that the Court of First Instance, by misinterpreting the facts of the case, found that the word
          
         Streamserve is usual for the public concerned and is not capable of being used to designate the characteristics of the goods to which
         the application for registration relates, the appellant is in reality confining itself to challenging ─ and without pleading
         any distortion of the clear sense of the evidence in the file submitted to the Court of First Instance ─ the findings of fact
         made by that Court.  Accordingly, that finding does not constitute a point of law which is subject, as such, to review by
         the Court of Justice on appeal (Case C-104/00 P  
         DKV v  
         OHIM [2002] ECR I-7561, paragraph 22). 
         
         
         31
            
          Secondly, in concluding from all the findings made, at paragraphs 44 to 48 of the contested judgment, that the word  
         Streamserve could serve, in trade, to designate a characteristic of most of the goods referred to in the application for registration,
         the Court of First Instance applied Article 7(1)(c) of Regulation No 40/97 correctly (
         OHIM v  
         Wrigley, paragraph 32). 
         
         
         32
            
          In those circumstances the second ground of appeal must be rejected. 
         
         
         33
            
          It follows from all of the foregoing that the appeal is clearly unfounded and must therefore be dismissed. 
         
         Costs
         34
            
          Under Article 69(2) of the Rules of Procedure of the Court of Justice, which applies to appeal proceedings by virtue of Article
         118, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party's pleadings.
          Since OHIM has applied for costs, and the appellant has been unsuccessful, the latter must be ordered to pay the costs. 
         
         On those grounds, 
         
         
         
            
            THE COURT (Fourth Chamber)
         
         
          hereby orders:
         
            
            1.
             The appeal is dismissed. 
            
            
            2.
             The appellant is to pay the costs. 
            
             Luxembourg, 5 February 2004. 
         
         
         
                  R. Grass 
               
               
                  J.N. Cunha Rodrigues  
               
            
         
         
         
                  Registrar
               
               
                  President of the Fourth Chamber
               
            
      
      
          1 –
            
             Language of the case: English.