Agencja Wydawnicza Technopol sp. z o.o. v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM).
Date: 2011-03-10
31. Furthermore, the fact that a sign, such as that at issue, is composed of numerals with no graphic modifications and has not therefore been stylised creatively or artistically by the applicant for registration does not as such preclude that sign from being registered as a mark (see, by analogy, Case C‑265/09 P OHIM  v BORCO-Marken-Import Matthiesen  [2010] ECR I‑0000, paragraph 38).
33. A sign which, in relation to the goods or services for which its registration as a mark is applied for, has descriptive character for the purposes of Article 7(1)(c) of Regulation No 40/94 is – save where Article 7(3) applies – devoid of any distinctive character as regards those goods or services (as regards Article 3 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), see, by analogy, Case C-265/00 Campina Melkunie  [2004] ECR I‑1699, paragraph 19; as regards Article 7 of Regulation No 40/94, see Case C‑191/01 P OHIM  v Wrigley  [2003] ECR I‑12447, paragraph 30, and the order in Case C‑150/02 P Streamserve  v OHIM  [2004] ECR I‑1461, paragraph 24).
36. In examining that argument, due account must be taken of the objective pursued by Article 7(1)(c) of Regulation No 40/94. Each of the grounds for refusal listed in Article 7(1) must be interpreted in the light of the general interest underlying it (see, inter alia, Joined Cases C-456/01 P and C‑457/01 P Henkel  v OHIM  [2004] ECR I‑5089, paragraph 45, and Case C‑48/09 P Lego Juris  v OHIM  [2010] ECR I‑0000, paragraph 43).
37. The general interest underlying Article 7(1)(c) of Regulation No 40/94 is that of ensuring that descriptive signs relating to one or more characteristics of the goods or services in respect of which registration as a mark is sought may be freely used by all traders offering such goods or services (see, to that effect, OHIM  v Wrigley , paragraph 31 and the case-law cited).
38. With a view to ensuring that that objective of free use is fully met, the Court has stated that, in order for OHIM to refuse to register a sign on the basis of Article 7(1)(c) of Regulation No 40/94, it is not necessary that the sign in question actually be in use at the time of the application for registration in a way that is descriptive. It is sufficient that the sign could be used for such purposes ( OHIM  v Wrigley , paragraph 32; Campina Melkunie , paragraph 38; and the order of 5 February 2010 in Case C-80/09 P Mergel and Others  v OHIM , paragraph 37).
39. By the same token, the Court has stated that the application of that ground for refusal does not depend on there being a real, current or serious need to leave a sign or indication free and that it is therefore of no relevance to know the number of competitors who have an interest, or who might have an interest, in using the sign in question (Joined Cases C-108/97 and C-109/97 Windsurfing Chiemsee  [1999] ECR I-2779, paragraph 35, and Case C‑363/99 Koninklijke KPN Nederland  [2004] ECR I-1619, paragraph 58). It is, furthermore, irrelevant whether there are other, more usual, signs than that at issue for designating the same characteristics of the goods or services referred to in the application for registration ( Koninklijke KPN Nederland , paragraph 57).
46. As was pointed out in paragraph 33 above, the descriptive signs referred to in Article 7(1)(c) of Regulation No 40/94 are also devoid of any distinctive character for the purposes of Article 7(1)(b) of that regulation. Conversely, a sign may be devoid of distinctive character for the purposes of Article 7(1)(b) for reasons other than the fact that it may be descriptive (see, with regard to the identical provision laid down in Article 3 of Directive 89/104, Koninklijke KPN Nederland , paragraph 86, and Campina Melkunie , paragraph 19).
47. There is therefore a measure of overlap between the scope of Article 7(1)(b) of Regulation No 40/94 and the scope of Article 7(1)(c) of that regulation (see, by analogy, Koninklijke KPN Nederland , paragraph 67), Article 7(1)(b) being distinguished from Article 7(1)(c) in that it covers all the circumstances in which a sign is not capable of distinguishing the goods or services of one undertaking from those of other undertakings.
49. The situations specifically covered by Article 7(1)(c) of Regulation No 40/94 are those in which the sign in respect of which registration as a mark is sought is capable of designating a ‘characteristic’ of the goods or services referred to in the application. By using, in Article 7(1)(c) of Regulation No 40/94, the terms ‘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’, the legislature made it clear, first, that the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service must all be regarded as characteristics of goods or services and, secondly, that that list is not exhaustive, since any other characteristics of goods or services may also be taken into account.
50. The fact that the legislature chose to use the word ‘characteristic’ highlights the fact that the signs referred to in Article 7(1)(c) of Regulation No 40/94 are merely those which serve to designate a property, easily recognisable by the relevant class of persons, of the goods or the services in respect of which registration is sought. As the Court has pointed out, a sign can be refused registration on the basis of Article 7(1)(c) of Regulation No 40/94 only if it is reasonable to believe that it will actually be recognised by the relevant class of persons as a description of one of those characteristics (see, by analogy, as regards the identical provision laid down in Article 3 of Directive 89/104, Windsurfing Chiemsee , paragraph 31, and Koninklijke KPN Nederland , paragraph 56).
59. As regards Article 12(b) of Regulation No 40/94, the Court has had occasion to point out that the rule set out in that provision does not have a decisive bearing on the interpretation of the rule set out in Article 7(1)(c) of that regulation (see, with regard to the identical provision laid down in Article 6 of Directive 89/104, Windsurfing Chiemsee , paragraph 28).
60. As the General Court rightly stated in paragraph 32 of the judgment under appeal, Article 12 of Regulation No 40/94 concerns the limits on the effects of a Community trade mark, whereas Article 7 of that regulation relates to the grounds for refusal to register signs as ma rks.
61. Contrary to what Technopol appears to be suggesting, the fact that Article 12(b) of Regulation No 40/94 ensures that every trader may freely use indications relating to the characteristics of goods and services in no way limits the scope of Article 7(1)(c) of that regulation. On the contrary, that fact clearly discloses the need for the ground of refusal set out in Article 7(1)(c) of Regulation No 40/94 – which, moreover, is an absolute ground for refusal – to be actually applied to any sign which may designate a characteristic of the goods or the services in respect of which its registration as a mark is sought (see, to that effect, as regards Article 6 of Directive 89/104, Case C‑104/01 Libertel  [2003] ECR I-3793, paragraphs 58 and 59, and, as regards Article 12 of Regulation No 40/94, Case C-64/02 P OHIM  v Erpo Möbelwerk  [2004] ECR I-10031, paragraph 45).
62. Since the rule set out in Article 12(b) of Regulation No 40/94 plays no intrinsic role, therefore, in the application of Article 7(1)(c) of that regulation, the argument relating to the interplay between those two provisions is unfounded.
73. As Technopol rightly submits, OHIM is under a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration.
74. In the light of those two principles, OHIM must, when examining an application for registration of a Community trade mark, take into account the decisions already taken in respect of similar applications and consider with especial care whether it should decide in the same way or not (see, by analogy, with regard to Article 3(1)(b) and (c) of Directive 89/104, order of 12 February 2009 in Joined Cases C‑39/08 and C-43/08 Bild digital and ZVS , summary published at ECR I‑20, paragraph 17).
75. That said, the way in which the principles of equal treatment and sound administration are applied must be consistent with respect for legality.
76. Consequently, a person who files an application for registration of a sign as a trade mark cannot rely, to his advantage and in order to secure an identical decision, on a possibly unlawful act committed to the benefit of someone else (see, to that effect, order in Bild digital and ZVS , paragraph 18).
77. Moreover, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered ( OHIM  v Erpo Möbelwerk , paragraph 45, and OHIM  v BORCO-Marken-Import Matthiesen , paragraph 45). That examination must be undertaken in each individual case. The registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (see, to that effect, as regards Article 3 of Directive 89/104, Case C-218/01 Henkel  [2004] ECR I-1725, paragraph 62).