August Storck KG v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM).
Date: 2006-06-22
25. As regards the first part of the first ground of appeal, it is settled case-law that the distinctive character of a trade mark, within the meaning of Article 7(1)(b) of Regulation No 40/94, must be assessed, firstly, by reference to the goods or services in respect of which registration has been applied for and, secondly, by reference to the perception of them by the relevant public, which consists of average consumers of the goods or services in question who are reasonably well informed and reasonably observant and circumspect (see, in particular, Joined Cases C-456/01 P and C-457/01 P Henkel v OHIM [2004] ECR I‑5089, paragraph 35, and Case C-173/04 P Deutsche SiSi-Werke  v OHIM  [2006] ECR I-0000, paragraph 25).
26. According to equally established case-law, the criteria for assessing the distinctive character of three-dimensional marks consisting of the appearance of the product itself are no different from those applicable to other categories of trade mark (see Henkel v OHIM , paragraph 38, Case C-136/02 P Mag Instrument  v OHIM  [2004] ECR I‑9165, paragraph 30, and Deutsche SiSi-Werke  v OHIM , paragraph 27).
27. 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, which consists of the appearance of the product itself, as it is in the case of a word or figurative mark, which consists of a sign unrelated to 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, inter alia, Henkel  v OHIM , paragraph 38, Mag Instrument  v OHIM , paragraph 30, and Deutsche SiSi-Werke  v OHIM , paragraph 28).
28. In those circumstances, 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 Article 7(1)(b) of Regulation No 40/94 (see, in particular, Henkel  v OHIM , paragraph 39, Mag Instrument  v OHIM , paragraph 31, and Deutsche SiSi-Werke  v OHIM , paragraph 31).
29. That case-law, which was developed in relation to three-dimensional trade marks consisting of the appearance of the product itself, also applies where, as in the present case, the trade mark applied for is a figurative mark consisting of the two-dimensional representation of that product. In such a case, the mark likewise does not consist of a sign unrelated to the appearance of the products it covers.
30. Therefore, the Court of First Instance rightly took into consideration the shapes and colours of sweet wrappers commonly used in trade in assessing whether the mark applied for is, or is not, devoid of any distinctive character.
31. The Court of First Instance found, in paragraph 55 of the judgment under appeal, that ‘the Board of Appeal did not err in law in finding that “the configuration of the mark in question … did not fundamentally stand out against the other usual presentations in the trade”’, and, in paragraph 57 of that judgment, that the wrapping at issue ‘is not substantially different’ from wrappers for sweets or caramels commonly used in trade. In so far as the requirement of a fundamental or substantial difference goes further than the mere significant departure required by the case-law cited in paragraph 28 of this judgment, the Court of First Instance would have erred in law if it had made recognition of the distinctive character of the mark applied for subject to compliance with such a requirement.
32. Such is not the case, however. In paragraphs 56 and 57 of the judgment under appeal, the Court of First Instance, endorsing, in particular, the factual findings of the Board of Appeal, found that the shape of the wrappers at issue is a normal and traditional shape for a sweet wrapper, that a large number of sweets so wrapped could be found on the market, that the golden colour of the wrappers at issue is not unusual in itself, and it is not rare to see it used for sweet wrappers, that the characteristics of the combination of shape and colour of the mark applied for are not sufficiently different from those of the basic shapes commonly used for sweet wrappers, and that the wrappers in dispute come naturally to mind as a typical wrapper shape for those goods.
33. By those findings the Court of First Instance established to the requisite legal standard that the mark applied for does not depart significantly from the norm or customs of the confectionery sector. Therefore, it did not err in law in finding that the mark is devoid of any distinctive character.
40. The findings of the Court of First Instance in paragraphs 56 and 57 of the judgment under appeal and reiterated in paragraph 32 of this judgment constitute factual assessments. In accordance with Article 225(1) 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 do not, save where the facts or evidence are distorted, constitute points of law subject, as such, to review by the Court of Justice on appeal (see, in particular, Case C-104/00 P DKV  v OHIM  [2002] ECR I-7561, paragraph 22, and Deutsche SiSi-Werke  v OHIM , paragraph 35).
47. Under Article 225 EC, the first paragraph of Article 58 of the Statute of the Court of Justice and Article 112(1)(c) of the Rules of Procedure of the Court of Justice, an appeal must indicate precisely the contested elements of the judgment which the appellant seeks to have set aside and also the legal arguments specifically advanced in support of the appeal. That requirement is not satisfied by an appeal which, without even including an argument specifically identifying the error of law allegedly vitiating the judgment under appeal, merely repeats or reproduces verbatim the pleas in law and arguments previously submitted to the Court of First Instance (see, in particular, Case C-352/98 P Bergaderm and Goupil  v Commission [2000] ECR I-5291, paragraphs 34 and 35, and Case C-208/03 P Le Pen  v Parliament  [2005] ECR I-6051, paragraph 39).
48. By contrast, provided that the appellant challenges the interpretation or application of Community law by the Court of First Instance, the points of law examined at first instance may be discussed again in the course of an appeal. Indeed, if an appellant could not thus base his appeal on pleas in law and arguments already relied on before the Court of First Instance, an appeal would be deprived of part of its purpose (see, in particular, Case C-41/00 P Interporc  v Commission  [2003] ECR I-2125, paragraph 17, and Le Pen  v Parliament , paragraph 40).
50. As to whether it is well founded, under Article 74(1) of Regulation No 40/94 OHIM examiners and, on appeal, the Boards of Appeal of OHIM are required to examine the facts of their own motion in order to determine whether the mark registration of which is sought falls under one of the grounds for refusal of registration laid down in Article 7 of that regulation. It follows that the competent bodies of OHIM may be led to base their decisions on facts which have not been put forward by the applicant for the mark.
51. Whilst it is in principle the task of those bodies to establish in their decisions the accuracy of such facts, such is not the case where they rely on facts which are well known.
53. The finding, by the Court of First Instance, as to whether the facts on which the Board of Appeal of OHIM has based its decision are well known or not is a factual assessment which, save where the facts or evidence are distorted, is not subject to review by the Court of Justice on appeal.
61. According to settled case-law, to allow a party to put forward for the first time before the Court of Justice a plea in law which it has not raised before the Court of First Instance would be to allow it to bring before the Court, whose jurisdiction in appeals is limited, a case of wider ambit than that which came before the Court of First Instance. In an appeal the Court’s jurisdiction is therefore confined to review of the findings of law on the pleas argued before the Court of First Instance (see, in particular, Joined Cases C-186/02 P and C-188/02 P Ramondín and Others  v Commission  [2004] ECR I-10653, paragraph 60).
75. As regards the first part of the fourth ground of appeal, it is settled case-law that, in order to assess whether a mark has acquired distinctive character following the use which has been made of it, the following may also be taken into account: the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant class of persons who, because of the mark, identify goods as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (see, to that effect, in relation to Article 3(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), a provision which is identical, in substance, to Article 7(3) of Regulation No 40/94, and Joined Cases C-108/97 and C-109/97 Windsurfing Chiemsee  [1999] ECR I-2779, paragraph 51, Case C-299/99 Philips  [2002] ECR I-5475, paragraph 60, and Case C-353/03 Nestlé  [2005] ECR I-6135, paragraph 31).
76. The market share held by the mark is therefore an indication which may be relevant for the purposes of assessing whether that mark has acquired distinctive character through use. Such is the case, in particular, where, as in the present case, a mark consisting of the appearance of the product in respect of which registration is sought appears to be devoid of any distinctive character because it does not depart significantly from the norm or customs of the sector. It is probable, in such a case, that such a mark is likely to acquire distinctive character only if, following the use which is made of it, the products which bear it have more than a negligible share of the market in the products at issue.
77. For the same reasons, the share of the amount of publicity for the market in the products in dispute represented by advertising investment in promoting a mark may also be relevant for assessing whether the mark has acquired distinctive character through use.
78. Moreover, the question whether or not such information is necessary for assessing whether a given mark has acquired distinctive character through use for the purposes of Article 7(3) of Regulation No 40/94 comes within the scope of the assessment of the facts by OHIM and, on appeal, by the Court of First Instance.
83. It follows that a mark can be registered under Article 7(3) of Regulation No 40/94 only if evidence is provided that it has acquired, through the use which has been made of it, distinctive character in the part of the Community in which it did not, ab initio , have such character for the purposes of Article 7(1)(b). The part of the Community referred to in Article 7(2) may be comprised of a single Member State.