Freixenet, SA v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM).
Date: 2011-10-20
42. According to settled case-law, 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 in respect of which registration is sought as originating from a particular undertaking, and thus to distinguish those goods from those of other undertakings (see, in particular, Joined Cases C-456/01 P and C-457/01 P Henkel v OHIM [2004] ECR I-5089, paragraph 34; Case C-136/02 P Mag Instrument v OHIM [2004] ECR I-9165, paragraph 29, and Case C-238/06 P Develey v OHIM [2007] ECR I-9375, paragraph 79).
43. That distinctive character must be assessed, first, by reference to the goods or services in respect of which registration is sought and, second, by reference to the perception of the relevant public (see, in particular, Henkel v OHIM , paragraph 35; Case C-25/05 P Storck v OHIM [2006] ECR I-5719, paragraph 25, and Develey v OHIM , paragraph 79).
45. It is also settled case-law that, the criteria for assessing the distinctive character of three-dimensional trade marks consisting of the appearance of the product itself are no different from those applicable to other categories of trade mark (see, in particular, Mag Instrument v OHIM , paragraph 30; Case C-173/04 P Deutsche SiSi-Werke v OHIM  [2006] ECR I-551, paragraph 27; Storck v OHIM , paragraph 26, and Case C-144/06 P Henkel v OHIM  [2007] ECR I-8109, paragraph 36).
46. However, when those criteria are applied, account must be taken of the fact that the perception of the average consumer is not necessarily the same in relation to a three-dimensional mark consisting of the appearance of the product itself as it is in relation to a word or figurative mark consisting of a sign which is independent of the appearance of the products it designates. 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 distinctive character in relation to such a three-dimensional mark than in relation to a word or figurative mark (see, in particular, Mag Instrument v OHIM , paragraph 30; Deutsche SiSi-Werke v OHIM , paragraph 28, and Storck v OHIM , paragraph 27).
47. 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, Mag Instrument v OHIM , paragraph 31; Deutsche SiSi-Werke v OHIM , paragraph 31, and Storck v OHIM , paragraph 28).
48. That case-law, which was developed in relation to three-dimensional trade marks consisting of the appearance of the product itself or the packaging of goods, such as liquids, which are packaged in trade for reasons linked to the very nature of the product (see Deutsche SiSi-Werke v OHIM , paragraph 29, and Case C-144/06 P Henkel v OHIM , paragraph 38), also applies where, as in the present case, the trade mark for which registration is sought is an ‘other’ mark consisting of the specific appearance of the surface of the packaging of a liquid product. In such a case, the mark likewise does not consist of a sign that is independent of the appearance of the necessary packaging of the products it designates (see, to that effect, Storck v OHIM , paragraph 29).
52. It follows that the General Court infringed Article 7(1)(b) of Regulation No 40/94 (see, to that effect, Case C-383/99 P Procter & Gamble v OHIM  [2001] ECR I‑6251, paragraph 45).