Henkel KGaA.
Date: 2004-02-12
30. As in the case of every other mark, the sign of which registration is applied for must fulfil the mark ' s essential function, 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. For a trade mark to be able to fulfil its essential role in the system of undistorted competition which the Treaty seeks to establish, it must offer a guarantee that all the goods or services bearing it have originated under the control of a single undertaking which is responsible for their quality (see, in particular, Case C-349/95  Loendersloot  [1997] ECR I-6227, paragraphs 22 and 24, Case C-39/97  Canon  [1998] ECR I-5507, paragraph 28, and  Philips , cited above, paragraph 30).
31. As regards the grounds for refusal of registration set out in Article 3(1) of the Directive, it must be borne in mind that marks must always be examined in relation to the goods or services in respect of which registration is applied for ( Philips , cited above, paragraph 59).
33. On the other hand, other goods exist which do not possess an intrinsic shape and must be packaged in order to be marketed. The packaging chosen imposes its shape on the goods. In such circumstances, that packaging, for the purposes of examining an application for registration as a mark, must be assimilated to the shape of the product. That applies, for example, to goods manufactured, in particular, in the form of granules, powder or liquid which, because of their very nature, lack a shape of their own.
35. Where an economic operator applies for registration as a trade mark of the packaging of goods of the kind described in paragraphs 11 and 12 of this judgment, the shape of the product and that of its packaging must be assimilated to each other for the purposes of a refusal of registration based on the grounds set out in Article 3(1)(e) of the Directive.
38. As regards paragraph (b) of the first question, it must be borne in mind at the outset, with regard to the possibility of considering an application for registration of a three-dimensional mark consisting of the packaging of the goods in the light of the various grounds for refusal set out in Article 3(1) of the Directive, that each of those grounds is independent of the others and calls for separate examination (see Joined Cases C-53/01 to C-55/01  Linde and Others  [2003] ECR I-3161, paragraph 67).
39. It follows that if a three-dimensional shape-of-product trade mark is not refused registration under Article 3(1)(e) of the Directive, registration may still be refused if it falls within one or more of the categories mentioned by that provision, in particular in Article 3(1)(b) to (d) ( Linde and Others , cited above, paragraph 68).
47. According to the Commission, the decisive factor in that regard is the average consumer ' s perception and not an abstract assessment of characteristics which   " differ from the norm or custom in the sector" , in the terms of the second question. If the latter are not decisive in themselves, they may nevertheless in certain cases influence the average consumer ' s perception. The Commission considers that the Court must apply the principles deriving from its case-law, in which it has already indicated to national courts that they must take into account the presumed expectations of an average consumer who is reasonably well informed and reasonably observant and circumspect (see in particular Case C-210/96  Gut Springenheide and Tusky  [1998] ECR I-4657, paragraphs 30, 31 and 37).
Findings of the Court
48. According to the case-law of the Court, for a mark to possess distinctive character within the meaning of Article 3(1)(b), it must serve to identify the product in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish that product from products of other undertakings ( Linde and Others , paragraph 40).
49. It follows that a simple departure from the norm or customs of the sector is not sufficient to render inapplicable the ground for refusal given in Article 3(1)(b) of the Directive. In contrast, a trade mark which significantly departs from the norm or customs of the sector and thereby fulfils its essential original function is not devoid of distinctive character.
50. That distinctive character of a trade mark within the meaning of Article 3(1)(b) must be assessed by reference, first, to the goods or services in respect of which registration is sought and, second, to the perception of the relevant persons, namely the consumers of the goods or services. That means the presumed expectations of an average consumer who is reasonably well informed and reasonably observant and circumspect (see, to that effect, Case C-210/96  Gut Springenheide and Tusk y, paragraph 31,  Philips , paragraph 63, and  Linde and Others , paragraph 41).
52. In any event, the perception of the average consumer is not necessarily the same in the case of a three-dimensional trade mark, consisting of the packaging of a product, as it is in the case of a word or figurative mark which consists of a sign that is independent from the appearance of the goods it denotes. Average consumers are not in the habit of making assumptions about the origin of goods based on the shape of their packaging, in the absence of any graphic or word element, and it could therefore prove more difficult to establish distinctive character in the case of such a three-dimensional trade mark than in the case of a word or figurative mark (see, to that effect,  Linde and Others , cited above, paragraph 48, and, as regards a mark consisting of a colour, Case C-104/01  Libertel  [2003] ECR I-3793, paragraph 65).
53. In view of the foregoing considerations, the answer to the second question must be that, for three-dimensional trade marks consisting of the packaging of goods which are packaged in trade for reasons linked to the very nature of the product, their distinctive character within the meaning of Article 3(1)(b) of the Directive must be assessed by reference to the perception of the average consumer of such goods, who is reasonably well informed and reasonably observant and circumspect. Such a trade mark must enable such a consumer to distinguish the product concerned from those of other undertakings without conducting an analytical or comparative examination and without paying particular attention.
The third question
60. As the Court has held, the competent authorities called on to apply and interpret the relevant national law must do so, as far as possible, in the light of the wording and the purpose of the Directive so as to achieve the result it has in view and thereby comply with the third paragraph of Article 249 EC (Joined Cases C-71/94 to C-73/94  Eurim-Pharm  [1996] ECR I-3603, paragraph 26, and Case C-63/97  BMW  [1999] ECR I-905, paragraph 22).
62. However, it does not thereby follow that the competent authority of a Member State is bound by the decisions of the competent authorities of the other Member States, since the registration of a trade mark depends, in each specific case, on specific criteria, applicable in precise circumstances, the purpose of which is to demonstrate that the trade mark is not caught by any of the grounds for refusal of registration set out in Article 3(1) of the Directive.
63. In that connection, whilst registration of an identical trade mark for identical goods or services effected in one Member State constitutes a circumstance which may be taken into consideration by the competent authority of another Member State among all the facts and circumstances which it is appropriate to take into account, it cannot, however, be decisive as regards the latter authority ' s decision to grant or refuse registration of a given trade mark.
64. As to whether it is necessary, when distinctive character is assessed under Article 3(1)(b) of the Directive, to undertake administrative investigations to determine whether and to what extent similar trade marks have been registered in other Member States, it need merely be borne in mind that the fact that a trade mark has been registered in one Member State for certain goods or services can have no bearing on the examination by the competent trade mark registration authority of another Member State of the distinctive character of a similar mark for goods or services similar to those in respect of which the first trade mark was registered (judgment delivered today in Case C-363/99  KPN  [2004] ECR I-1619, paragraph 44).