BioID AG, en liquidation v European Union Intellectual Property Office.
Date: 2005-09-15
27. First, the essential function of a trade mark 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, in particular, Case 102/77 Hoffmann-La Roche  [1978] ECR 1139, paragraph 7, and Case C-299/99 Philips  [2002] ECR I-5475, paragraph 30). Article 7(1)(b) of Regulation No 40/94 is thus intended to preclude registration of trade marks which are devoid of distinctive character which alone renders them capable of fulfilling that essential function (see Case  C-329/02 P SAT.1  v OHIM [2004] ECR I-8317, paragraph 23).
29. Thirdly, as regards a compound mark, such as that which forms the subject-matter of the present dispute, any distinctive character may be assessed, in part, in respect of each of the terms or elements, taken separately, but that assessment must, in any event, be based on the overall perception of that trade mark by the relevant public and not on the presumption that elements individually devoid of distinctive character cannot, on being combined, present such character (see SAT.1  v OHIM , cited above, paragraph 35). The mere fact that each of those elements, considered separately, is devoid of distinctive character does not mean that their combination cannot present such character (see, by way of analogy, Case C-363/99 Koninklijke KPN Nederland  [2004] ECR I-1619, paragraphs 99 and 100, Case C-265/00 Campina Melkunie  [2004] ECR I-1699, paragraphs 40 and 41, as well as SAT.1  v OHIM , cited above, paragraph 28).
41. As regards the question of proof that the trade mark applied for was commonly used in a descriptive way by the public or by competitors, it is sufficient to point out, first, that the fact that it has been shown that the trade mark applied for is commonly used by the public or by competitors is a relevant factor under Article 7(1)(d) of Regulation No 40/94, but not under Article 7(1)(b) (see, to that effect, Case C-64/02 P OHIM  v Erpo Möbelwerk  [2004] ECR I-0000, paragraphs 40 and 46).
43. It is clear from Article 225 EC and the first paragraph of Article 58 of the Statute of the Court of Justice that an appeal lies on points 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 thus does not, save where they distort the evidence, constitute a point of law which is subject, as such, to review by the Court of Justice on appeal (see, to that effect, Case C-104/00 P DKV  v OHIM  [2002] ECR I-7561, paragraph 22; Case C-194/99 P Thyssen Stahl  v Commission  [2003] ECR I-10821, paragraph 20; and Case C-136/02 P Mag Instrument  v OHIM  [2004] ECR I-0000, paragraph 39).
47. In that regard, it is necessary to point out, first of all, that decisions concerning registration of a sign as a Community trade mark which the Boards of Appeal 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 the decisions of Boards of Appeal 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 (see Case T-19/04 Metso Paper Automation v OHIM (PAPERLAB)  [2005] ECR I-0000, paragraph 39).
53. Finally, as has already been pointed out in paragraph 43 of this judgment, it is clear from Article 225 EC and the first paragraph of Article 58 of the Statute of the Court of Justice, that an appeal lies on points 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 thus does not, save where they distort the evidence, constitute a point of law which is subject, as such, to review by the Court of Justice on appeal.
59. As regards the validity of the head of claim, it must be pointed out that each of the grounds for refusal to register listed in Article 7(1) of Regulation No 40/94 is independent of the others and calls for separate examination (see OHIM  v Erpo Möbelwerk , cited above, paragraph 39). Furthermore, the various grounds for refusal must be interpreted in the light of the general interest underlying each of them. The general interest taken into consideration when examining each of those grounds for refusal may, or even must, reflect different considerations, according to the ground for refusal in question (see Joined Cases C-456/01 P and C-457/01 P Henkel  v OHIM  [2004] ECR I-5089, paragraphs 45 and 46, and SAT.1  v OHIM , cited above, paragraph 25).
60. In addition, it must be pointed out that the notion of general interest underlying Article 7(1)(b) of Regulation No 40/94 is, manifestly, indissociable from the essential function of a trade mark, which 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, SAT.1  v OHIM , cited above, paragraphs 23 and 27).
62. It must, however, be stated that, as the Court of Justice held in paragraph 36 of SAT.1  v OHIM , cited above, that criterion, although relevant in relation to Article 7(1)(c) of Regulation No 40/94, is not the yardstick by which Article 7(1)(b) must be interpreted.