Simba Toys GmbH & Co. KG v European Union Intellectual Property Office.
Date: 2016-11-10
21


It that respect, it must be recalled that the Court may at any time, after hearing the Advocate General, order the reopening of the oral part of the procedure under Article 83 of its Rules of Procedure, in particular if it considers that it lacks sufficient information or where the case must be decided on the basis of an argument which has not been debated between the interested parties (see, to that effect, judgment of 7 April 2016, Marchon Germany, C‑315/14, EU:C:2016:211, paragraph 19).
34


In that regard, while it is true that, in so far as it includes findings of a factual nature, the assessment of the functionality of the essential characteristics of a sign cannot, as such, be subject to review by the Court on appeal, save in the case of a distortion (see, to that effect, judgments of 14 September 2010, Lego Juris v OHIM, C‑48/09 P, EU:C:2010:516, paragraph 74, and of 17 March 2016, Naazneen Investments v OHIM, C‑252/15 P, not published,EU:C:2016:178, paragraph 59), the position is different with regard to the questions of law raised by an examination of the relevance of the legal criteria applied when carrying out that assessment and, in particular, of the factors taken into consideration to that end (see, to that effect, judgments of 14 September 2010, Lego Juris v OHIM, C‑48/09 P, EU:C:2010:516, paragraphs 84 and 85, and of 6 March 2014, Pi‑Design and Others v Yoshida Metal Industry, C‑337/12 P to C‑340/12 P, not published, EU:C:2014:129, paragraph 61).
36


As regards the merits of that ground of appeal, the first point to be noted here is that trade mark law constitutes an essential element in the system of competition in the European Union. In that system, each undertaking must, in order to attract and retain customers by the quality of its goods or services, be able to have registered as trade marks signs which enable the consumer, without any possibility of confusion, to distinguish those goods or services from others which have a different origin (judgment of 14 September 2010, Lego Juris v OHIM, C‑48/09 P, EU:C:2010:516, paragraph 38 and the case-law cited).
37


Moreover, as is apparent from Article 4 of Regulation No 40/94, a sign representing the shape of a product is one of the signs that may constitute a mark provided that, first, it is capable of being represented graphically and, secondly, it is capable of distinguishing the goods or services of one undertaking from those of other undertakings (see, to that effect, judgments of 29 April 2004, Henkel v OHIM, C‑456/01 P and C‑457/01 P, EU:C:2004:258, paragraphs 30 and 31, and of 14 September 2010, Lego Juris v OHIM, C‑48/09 P, EU:C:2010:516, paragraph 39).
38


It is also apparent from the Court’s case-law that each of the grounds for refusal to register listed in Article 7(1) of Regulation No 40/94 must be interpreted in the light of the underlying public interest (judgments of 29 April 2004, Henkel v OHIM, C‑456/01 P and C‑457/01 P, EU:C:2004:258, paragraph 45, and of 14 September 2010, Lego Juris v OHIM, C‑48/09 P, EU:C:2010:516, paragraph 43).
39


In that context, the Court has pointed out that Article 7(1)(e)(ii) of Regulation No 40/94 seeks to prevent trade mark law from granting an undertaking a monopoly on technical solutions or functional characteristics of a product (judgment of 14 September 2010, Lego Juris v OHIM, C‑48/09 P, EU:C:2010:516, paragraph 43).
40


Furthermore, it must, first of all, be recalled that a correct application of that provision requires that the essential characteristics of the three-dimensional sign at issue be properly identified (see, to that effect, judgments of 14 September 2010, Lego Juris v OHIM, C‑48/09 P, EU:C:2010:516, paragraph 68, and of 6 March 2014, Pi-Design and Others v Yoshida Metal Industry, C‑337/12 P to C‑340/12 P, not published, EU:C:2014:129, paragraph 46).
46


In order to analyse the functionality of a sign for the purposes of Article 7(1)(e)(ii) of Regulation No 40/94, which concerns only signs which consist of the shape of the actual goods, the essential characteristics of a shape must be assessed in the light of the technical function of the actual goods concerned (see, to that effect, judgment of 14 September 2010, Lego Juris v OHIM, C‑48/09 P, EU:C:2010:516, paragraph 72).
49


First, it follows from the case-law of the Court that, when examining the functional characteristics of a sign, the competent authority may carry out a detailed examination that takes into account material relevant to identifying appropriately the essential characteristics of a sign, in addition to the graphic representation and any descriptions filed at the time of application for registration (judgment of 6 March 2014, Pi-Design and Others v Yoshida Metal Industry, C‑337/12 P to C‑340/12 P, not published, EU:C:2014:129, paragraph 54).