Mag Instrument Inc. v Office for Harmonisation in the Internal Market (Trade Marks and Designs).
Date: 2004-10-07
19. The distinctive character of a trade mark within the meaning of Article 7(1)(b) of Regulation No 40/94 must be assessed by reference, first, to the goods or services in respect of which registration is sought and, secondly, to the perception of the relevant public. That means the presumed expectations of an average consumer who is reasonably well informed and reasonably observant and circumspect (see, to that effect, in relation to Article 3(1)(b) 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), which is identical to Article 7(1)(b) of Regulation No 40/94, Case C-218/01 Henkel  [2004] ECR I-0000, paragraph 50 and the case-law cited there; see also Joined Cases C-456/01 P and C-457/01 P Henkel  v OHIM  [2004] ECR I-0000, paragraph 35 and the case-law cited there).
20. As the Court has consistently held, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details. Thus, in order to assess whether or not a trade mark has any distinctive character, the overall impression given by it must be considered (see, in relation to a word mark, Case C-104/00 P DKV v OHIM [2002] ECR I-7561, paragraph 24, and, in relation to a three-dimensional mark constituted by the shape of the goods themselves, Joined Cases C-468/01 P to C-472/01 P Procter & Gamble  v OHIM  [2004] ECR I-0000, paragraph 44).
29. For a trade mark to possess distinctive character for the purposes of Article 7(1)(b) of Regulation No 40/94, it must serve to identify the goods or services in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish the goods or services from those of other undertakings (see Henkel v OHIM , paragaph 34 and the case-law cited there).
30. The criteria for assessing the distinctive character of three-dimensional marks consisting of the shape of the product itself are no different from those applicable to other categories of trade mark. None the less, for the purpose of applying those criteria, the relevant public's perception is not necessarily the same in the case of a three-dimensional mark consisting of the shape of the product itself as it is in the case of a word or figurative mark consisting of a sign which is independent from the appearance of the products it denotes. Average consumers are not in the habit of making assumptions about the origin of products on the basis of their shape or the shape of their packaging in the absence of any graphic or word element and it could therefore prove more difficult to establish distinctiveness in relation to such a three-dimensional mark than in relation to a word or figurative mark (see Henkel v OHIM , paragraph 38 and the case-law cited there).
31. In those circumstances, the more closely the shape for which registration is sought resembles the shape most likely to be taken by the product in question, the greater the likelihood of the shape being devoid of any distinctive character for the purposes of Article 7(1)(b) of Regulation No 40/94. Only a mark which departs significantly from the norm or customs of the sector and thereby fulfils its essential function of indicating origin, is not devoid of any distinctive character for the purposes of that provision (see, to that effect, Henkel v OHIM , paragraph 39 and the case-law cited there).
32. Therefore, contrary to what the appellant submits, where a three-dimensional mark is constituted by the shape of the product for which registration is sought, the mere fact that that shape is a ‘variant’ of a common shape of that type of product is not sufficient to establish that the mark is not devoid of any distinctive character for the purposes of Article 7(1)(b) of Regulation No 40/94. It must always be determined whether such a mark permits the average consumer of that product, who is reasonably well informed and reasonably observant and circumspect, to distinguish the product concerned from those of other undertakings without conducting an analytical examination and without paying particular attention.
39. As is clear from Article 225 EC and the first paragraph of Article 58 of the Statute of the Court of Justice, an appeal lies on a point 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, DKV v OHIM , paragraph 22, and Case C-194/99 P Thyssen Stahl  v Commission  [2003] ECR I-10821, paragraph 20).
47. If a mark does not ab initio have distinctive character within the meaning of Article 7(1)(b) of Regulation No 40/94, Article 7(3) provides that it may acquire such character in relation to the goods or services claimed in consequence of the use which has been made of it. That distinctive character may be acquired, inter alia, after the normal process of familiarising the relevant public has taken place (see Case C-104/01 Libertel  [2003] ECR I-3793, paragraph 67).
48. In order to assess whether or not a mark is devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 40/94, the Office, or, where a challenge is brought, the Court of First Instance, must have regard to all the relevant facts and circumstances (see, in relation to Article 3(1)(b) of Directive 89/104, Case C-363/99 Koninklijke KPN Nederland  [2004] ECR I-0000, paragraph 35).
76. Next, as regards the criticism of the Court of First Instance for not wishing to hear the author of the expert’s report produced by the appellant, as the latter proposed, it must be pointed out that the Court of First Instance is the sole judge of any need for the information available to it concerning the cases before it to be supplemented. Whether or not the evidence before it is sufficient is a matter to be appraised by it alone and, as already noted at paragraph 39 of this judgment, is not subject to review by the Court of Justice on appeal, except where the clear sense of that evidence has been distorted or the substantive inaccuracy of the Court of First Instance’s findings is apparent from the documents in the case-file (Case C‑315/99 P Ismeri Europa  v Court of Auditors  [2001] ECR I-5281, paragraph 19, and Joined Cases C-24/01 P and C-25/01 P Glencore and Compagnie Continentale  v Commission  [2002] ECR I-10119, paragraphs 77 and 78).