Joined Cases C-202/08 P and C-208/08 P.
Date: 2009-07-16
40. At points 59 to 63 of his Opinion, the Advocate General highlighted some of the essential functions which may be attributed to a State emblem. These include that of identifying a State and that of representing its sovereignty and unity. The essential function of the trade mark, for its part, is to guarantee the identity of the origin of the marked product or service to the consumer or end-user by enabling him, without any possibility of confusion, to distinguish the product or service from others which have another origin (see, inter alia, Case C‑39/97 Canon [1998] ECR I‑5507, paragraph 28, and Case C‑120/04 Medion  [2005] ECR I‑8551, paragraph 23).
41. For the trade mark to be able to fulfil its essential role in the system of undistorted competition which the Treaty seeks to establish and maintain, it must offer a guarantee that all the goods or services bearing it have originated under the control of a single undertaking which is responsible for their quality (see, inter alia, Case 102/77 Hoffmann-La Roche  [1978] ECR 1139, paragraph 7, and Case C‑299/99 Philips  [2002] ECR I‑5475, paragraph 30).
44. The same is true of the existence of a likelihood of confusion which, although it is the specific condition for the protection of the trade mark in the case of similarity between the trade mark and the sign and between the goods or services (see, inter alia, Medion , paragraph 24; Case C‑102/07 adidas and adidas Benelux  [2008] ECR I‑2439, paragraph 28; and Case C‑533/06 O2 Holdings & O2 (UK)  [2008] ECR I‑4231, paragraph 47) is not required for the protection of an emblem, since Article 6 ter (1)(a) of the Paris Convention makes no reference to it.
53. Nevertheless, the heraldic description of the emblem provided by the Court of First Instance in the present case and the assessment of the question whether the trade mark applied for contained an imitation from a heraldic point of view fall outside the scope of the Court’s review. In accordance with Article 225(1) EC and the first paragraph of Article 58 of the Statute of the Court of Justice, an appeal lies on a point of law only. The Court of First Instance thus has exclusive jurisdiction to find and appraise the relevant facts and to assess the evidence. The appraisal of those facts and the assessment of that evidence therefore do not, save where the facts or evidence are distorted, constitute points of law subject, as such, to review by the Court of Justice on appeal (see, inter alia, Case C‑104/00 P DKV  v OHIM  [2002] ECR I‑7561, paragraph 22, and Case C‑25/05 P Storck  v OHIM  [2006] ECR I‑5719, paragraph 40).
57. As regards the complaints that the Court of First Instance did not take into account the practice of OHIM and other national offices responsible for trade marks in relation to emblems, it must be observed that, as far as OHIM is concerned, first, decisions concerning registration of a sign as a Community trade mark which the Boards of Appeal of OHIM are called on to take under Regulation No 40/94 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of those decisions must be assessed solely on the basis of that regulation, as interpreted by the Community judicature, and not on the basis of a previous decision-making practice of those boards (Case C‑37/03 P BioID v OHIM  [2005] ECR I‑7975, paragraph 47, and Case C‑173/04 P Deutsche SiSi-Werke  v OHIM  [2006] ECR I‑551, point 48).
58. Secondly, as regards the earlier national registrations relied upon by American Clothing, the Community trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it is self-sufficient and applies independently of any national system. Accordingly, the registrability of a sign as a Community trade mark is to be assessed on the basis of the relevant Community legislation alone, as interpreted by the Community judicature (see, to that effect, Case C‑488/06 P L & D  v OHIM  [2008] ECR I‑0000, paragraph 58). Consequently, neither OHIM nor, as the case may be, the Community judicature are bound by decisions adopted in any Member State, or indeed a third country, finding a sign to be registrable as a national trade mark. Those considerations apply a fortiori  to the registration of marks other than that applied for in the present case.