Chartered Institute of Patent Attorneys v Registrar of Trade Marks.
Date: 2012-06-19
31. In that regard, it must be observed that, according to settled case-law, the procedure provided for by Article 267 TFEU is an instrument of cooperation between the Court of Justice and the national courts, by means of which the Court provides the national courts with the points of interpretation of Community law which they need in order to decide the disputes before them (see Case C-83/91 Meilicke [1992] ECR I-4871, paragraph 22, and Case C-445/06 Danske Slagterier  [2009] ECR I-2119, paragraph 65).
32. In the context of that cooperation, questions concerning EU law enjoy a presumption of relevance. The Court may refuse to rule on a question referred by a national court only where it is quite obvious that the interpretation of EU law that is sought is unrelated to the actual facts of the main action or its purpose, where the problem is hypothetical, or where the Court does not have before it the factual or legal material necessary to give a useful answer to the questions submitted to it (see Case C-421/01 Traunfellner [2003] ECR I-11941, paragraph 37; Joined Cases C-94/04 and C-202/04 Cipolla and Others  [2006] ECR I-11421, paragraph 25; and Joined Cases C-570/07 and C-571/07 Blanco Pérez and Chao Gómez [2010] ECR I-4629, paragraph 36).
33. However, that is not so in the present case. It is clear that the application for registration of the trade mark was actually lodged and that the Registrar rejected it, even if he departed from his usual practice. Moreover, the interpretation of European Union law sought by the national body does actually respond to an objective need inherent in the outcome of a case pending before it (see, to that effect, Case C-144/04 Mangold [2005] ECR I-9981, paragraph 38).
36. It should first be recalled that, as is stated in recital 11 in the preamble to Directive 2008/95, the function of the protection afforded by a trade mark is in particular to guarantee the mark to the consumer or end-user as an indication of origin of the product or services denoted by the trade mark, by enabling him, without any possibility of confusion, to distinguish the product or service from others which have another origin (see, to that effect, Case C-39/97 Canon [1998] ECR I-5507, paragraph 28; Case C-273/00 Sieckmann [2002] ECR I-11737, paragraphs 34 and 35; and Case C-529/07 Chocoladefabriken Lindt & Sprüngli  [2009] ECR I-4893, paragraph 45).
37. It follows that the registration of a sign as a trade mark must always be applied for in relation to certain goods or services. Although, the function of the graphic representability requirement is, in particular, to define the mark itself in order to determine the precise subject of the protection afforded by the registered mark (see Sieckmann , paragraph 48) the extent of that protection is determined by the nature and the number of goods and services identified in that application.
The requirements of clarity and precision for identifying goods and services
40. Although it is apparent from recital 6 of the preamble to Directive 2008/95 that the Member States remain free to fix the provisions of procedure concerning, inter alia, the registration of trade marks (see, to that effect, Case C-418/02 Praktiker Bau- und Heimwerkermärkte  [2005] ECR I-5873, paragraph 30, and Case C-246/05 Häupl  [2007] ECR I-4673, paragraph 26), the fact remains that the Court has held that determination of the nature and content of the goods and services eligible for protection by a registered trade mark is subject, not to the provisions on registration procedures, but to the substantive conditions for acquiring the right conferred by the trade mark ( Praktiker Bau- und Heimwerkermärkte , paragraph 31).
41. In that regard, recital 8 of the preamble to Directive 2008/95 emphasises that attainment of the objectives at which the approximation of the laws of the Member States is aiming requires that the conditions for obtaining and continuing to hold a registered trade mark be, in general, identical in all Member States (see, to that effect, Sieckmann , paragraph 36; Case C-363/99 Koninklijke KPN Nederland [2004] ECR I-1619, paragraph 122; and Case C-482/09 Budějovický Budvar  [2011] ECR I-8701, paragraph 31).
43. In particular, the question of whether or not any of the grounds for refusal or invalidity set out in Article 3 of the Directive apply to the mark must be assessed specifically by reference to the goods or services in respect of which registration is sought (see Koninklijke KPN Nederland , paragraph 33, and Case C-239/05 BVBA Management, Training en Consultancy  [2007] ECR I-1455, paragraph 31).
45. Moreover, the Court has held that, although it is not necessary to specify in detail the service(s) for which registration is sought, since, to identify those services, it is sufficient to use general wording, the applicant must conversely be required to specify the goods or types of goods to which those services relate by means, for example, of other more specific details. Such details will make it easier to apply the articles of Directive 2008/95 referred to in the previous paragraphs, without appreciably limiting the protection afforded to the trade mark (see, by analogy, Praktiker Bau- und Heimwerkermärkte , paragraphs 49 to 51).
46. In that connection, it must be recalled that the entry of the mark in a public register has the aim of making it accessible to the competent authorities and to the public, particularly to economic operators ( Sieckmann , paragraph 49, and Case C-49/02 Heidelberger Bauchemie  [2004] ECR I-6129, paragraph 28).
47. On the one hand, the competent authorities must know with clarity and precision the nature of the signs of which a mark consists in order to be able to fulfil their obligations in relation to the prior examination of applications for registration and the publication and maintenance of an appropriate and precise register of trade marks (see, by analogy, Sieckmann , paragraph 50, and Heidelberger Bauchemie , paragraph 29).
48. On the other hand, economic operators must be able to acquaint themselves, with clarity and precision, with registrations or applications for registration made by their actual or potential competitors, and thus to obtain relevant information about the rights of third parties ( Sieckmann , paragraph 51, and Heidelberger Bauchemie , paragraph 30).
52. Since the Nice Agreement was adopted pursuant to Article 19 of the Paris Convention and Directive 2008/95, according to recital 13, was not intended to affect the obligations of the Member States resulting from that Convention, it must be held that that directive does not preclude the competent national authorities from requiring or agreeing that an applicant for a national trade mark should identify the goods and services for which he is seeking the protection conferred by the trade mark by using the Nice Classification.
57. It must be recalled that the Court has held that it is possible to apply for registration of a mark either in respect of all the goods or services falling within a class, or in respect of only some of those goods or services (see, to that effect, Koninklijke KPN Nederland , paragraph 112).