Shield Mark BV v Joost Kist h.o.d.n. Memex.
Date: 2003-11-27
34. As regards the first question, the purpose of Article 2(a) of the Directive is to define the types of signs of which a trade mark may consist. That provision states that a trade mark may consist of   " particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging ..." . Admittedly, 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 ( Sieckmann , cited above, paragraph 43).
35. However, as is 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 of which a trade mark may consist, that list is not exhaustive. Consequently, that provision, although it does not mention signs which are not in themselves capable of being perceived visually, such as sounds, does not, however, expressly exclude them (see, to that effect, regarding olfactory signs,  Sieckmann , paragraph 44).
36. Furthermore, as Shield Mark, the intervening Governments and the Commission have stated, sound signs are not by nature incapable of distinguishing the goods or services of one undertaking from those of other undertakings.
37. In those circumstances, Article 2 of the Directive must be interpreted as meaning that sounds may constitute a trade mark, on condition that they may also be represented graphically, a question to be dealt with when the Court considers the second question.
38. As regards part (b) of the first question, Article 2 of the Directive does not preclude the registration of sounds as trade marks.  Consequently, the Member States cannot preclude such registration as a matter of principle.
39. Although the Directive does not seek to achieve full-scale approximation of the laws of the Member States relating to trade marks, it is clear from the seventh recital to the Directive that the conditions for obtaining and continuing to hold a trade mark are to be the same in all the Member States.
40. In that regard, as the French Government has observed, the nature of the signs of which a trade mark may consist cannot differ from one Member State to another.
41. The answer to the first question must therefore be that Article 2 of the Directive is to be interpreted as meaning that sound signs must be capable of being regarded as trade marks provided that they are capable of distinguishing the goods or services of one undertaking from those of other undertakings and are capable of being represented graphically.
Second question
51. As a preliminary observation, it is to be remembered that, in the context of the cooperation between the Court of Justice and the national courts provided for by Article 234 EC, it is solely for the national court before which the dispute has been brought, and which must assume responsibility for the subsequent judicial decision, to determine in the light of the particular circumstances of the case both the need for a preliminary ruling in order to enable it to deliver judgment and the relevance of the questions which it submits to the Court.  Consequently, where the questions submitted by the national court concern the interpretation of Community law, the Court of Justice is, in principle, bound to give a ruling (see, inter alia, Case C-415/93  Bosman  [1995] ECR I-4921, paragraph 59).
52. Nevertheless, the Court has taken the view that, in order to determine whether it has jurisdiction, it should examine the conditions in which the case was referred to it by the national court.  The spirit of cooperation which must prevail in the preliminary-ruling procedure requires the national court, for its part, to have regard to the function entrusted to the Court of Justice, which is to assist in the administration of justice in the Member States and not to deliver advisory opinions on general or hypothetical questions (see, inter alia,  Bosman , cited above, paragraph 60).
53. The Court may therefore decline to rule on a question referred by a national court for a preliminary ruling where, inter alia, the problem is hypothetical (see, inter alia, Case C-111/01  Gantner Electronic  [2003] ECR I-4207. paragraph 36).
59. As regards, first, the representation of a sound sign by a description using the written language, it cannot be precluded a priori that such a mode of graphical representation satisfies the requirements defined at paragraph 55 of this judgment.  However, in the case of signs such as those at issue in the main proceedings, a graphical representation such as   " the first nine notes of   " Für Elise"
"  or   " a cockcrow"  at the very least lacks precision and clarity and therefore does not make it possible to determine the scope of the protection sought.  Accordingly, it cannot constitute a graphical representation of that sign for the purposes of Article 2 of the Directive.