Dyson Ltd v Registrar of Trade Marks.
Date: 2007-01-25
23. It should be borne in mind that, according to settled case-law, the referring court alone can determine the subject-matter of the questions it proposes to refer to the Court. It is solely for the national courts before which actions are brought, and which must bear the responsibility for the subsequent judicial decision, to determine in the light of the special features of each case both the need for a preliminary ruling in order to enable them to deliver judgment and the relevance of the questions which they submit to the Court (see, to that effect, Case C‑159/97 Castelletti  [1999] ECR I-1597, paragraph 14, and Case C‑154/05 Kersbergen-Lap and Dams-Schipper  [2006] ECR I-0000, paragraph 21).
24. However, even though, strictly speaking, a national court directs its reference to the interpretation of certain Community provisions which might come into consideration, the Court is not thereby precluded from providing the national court with all those elements for the interpretation of Community law which may be of assistance in adjudicating on the case pending before it, whether or not that court has specifically referred to them in its questions (see, to that effect, Case C‑387/01 Weigel  [2004] ECR I-4981, paragraph 44, and Case C‑152/03 Ritter‑Coulais  [2006] ECR I‑1711, paragraph 29).
25. Moreover, under Article 3(1)(a) of the Directive, signs which cannot constitute a trade mark are not to be registered or if registered are liable to be declared invalid. That provision thus precludes the registration of signs which do not meet the conditions imposed by Article 2 of the Directive, the purpose of which is to define the types of sign of which a trade mark may consist (see, to that effect, Philips , paragraph 38).
26. In those circumstances, contrary to the contentions of Dyson and the United Kingdom Government, even though the wording of the questions from the national court relates solely to Article 3 of the Directive and that court did not, in the main proceedings, touch on the issue of whether the subject-matter of the application in question may be viewed as a sign of which a trade mark may consist within the meaning of Article 2 of that directive, it is necessary as a preliminary matter to consider that question (see, to that effect, Case C‑104/01 Libertel  [2003] ECR I‑3793, paragraph 22).
27. Article 2 of the Directive provides that a trade mark may consist of any sign, 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 ( Philips , paragraph 32, and Case C‑273/00 Sieckmann  [2002] ECR I‑11737, paragraph 39).
28. It follows that, to be capable of constituting a trade mark for the purposes of Article 2 of the Directive, the subject-matter of any application must satisfy three conditions. First, it must be a sign. Secondly, that sign must be capable of being represented graphically. Thirdly, the sign must be capable of distinguishing the goods or services of one undertaking from those of other undertakings (see, to that effect, Libertel , paragraph 23, and Case C‑49/02 Heidelberger Bauchemie  [2004] ECR I‑6129, paragraph 22).
32. Although that provision mentions only signs which are capable of being perceived visually, are two-dimensional or three-dimensional and can thus be represented by means of letters or written characters or by a picture, it is however clear from the language of both Article 2 of the Directive and the seventh recital in the preamble thereto, which refers to a ‘list [of] examples’ of signs which may constitute a trade mark, that that list is not exhaustive. Accordingly, the Court has held previously that Article 2 of the Directive, although it does not mention signs which are not in themselves capable of being perceived visually, such as sounds or smells, does not expressly exclude them ( Sieckmann , paragraphs 43 and 44, and Case C‑283/01 Shield Mark  [2003] ECR I‑14313, paragraphs 34 and 35).
34. As the Court has held previously, the purpose of that requirement is in particular to prevent the abuse of trade mark law in order to obtain an unfair competitive advantage ( Heidelberger Bauchemie , paragraph 24).
39. It follows that the subject-matter of the application at issue in the main proceedings is, in actual fact, a mere property of the product concerned and does not therefore constitute a ‘sign’ within the meaning of Article 2 of the Directive (see, to that effect, Libertel , paragraph 27).