Henkel KGaA v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM).
Date: 2004-04-29
30. Under Article 4 of Regulation No 40/94 a Community trade mark may consist of any signs capable of being represented graphically, provided that such signs are capable of distinguishing the products or services of one undertaking from those of other undertakings.
31. It is clear from Article 4 that both a product’s shape and its colours fall among the signs which may constitute a Community trade mark. Therefore, a sign consisting of the three-dimensional shape of a tablet for washing machines or dishwashers, in combination with the tablet’s arrangement of colours may, in principle, constitute a trade mark, provided that the two conditions mentioned in the preceding paragraph are met.
32. However, as the Court of First Instance rightly pointed out in paragraph 42 of the judgment in Case T-335/99 and in paragraph 40 of the judgment in Case T‑336/99, the fact that a sign is, in general, capable of constituting a trade mark within the meaning of Article 4 of Regulation No 40/94 does not mean that the sign necessarily has distinctive character for the purposes of Article 7(1)(b) of  the regulation in relation to a specific product or service.
34. 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 product in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish that product from those of other undertakings (see, 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), a provision which is identical to Article 7(1)(b), Joined Cases C-53/01 to C‑55/01 Linde and Others [2003] ECR I-3161, paragraph 40).
35. That distinctive character must be assessed, first, by reference to the products or services in respect of which registration has been applied for and, second, by reference to the perception of the relevant public, which consists of average consumers of the products or services in question, who are reasonably well informed and reasonably observant and circumspect (see, inter alia, Linde , paragraph 41, and Case C‑363/99 Koninklijke KPN Nederland  [2004] ECR I‑0000, paragraph 34).
36. It is apparent from the grounds of the judgments under appeal that the Court of First Instance did not err in law in its interpretation of Article 7(1)(b) of Regulation No 40/94.
38. The Court of First Instance was also correct in stating that the criteria for assessing the distinctive character of three-dimensional shape-of-products marks are no different from those applicable to other categories of trade mark. It none the less observed that, for the purpose of applying those criteria, the relevant public’s perception is not necessarily the same in relation to a three-dimensional mark consisting of the shape and colours of the product itself as it is in relation to 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, to that effect, Linde , paragraph 48, and Case C‑218/01 Henkel [2004] ECR I‑0000, paragraph 52).
39. 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 trade 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, in relation to the identical provision in Article 3(1)(b) of First Directive 89/104, Henkel , paragraph 49).
41. The actual application by the Court of First Instance of those criteria to this case involves findings of a factual nature. The Court of First Instance has exclusive jurisdiction to make findings of fact, save where a substantive inaccuracy in its findings is attributable to the documents submitted to it, and to appraise those facts. That appraisal thus does not, save where the clear sense of the evidence produced to it has been distorted, constitute a point of law which is subject, as such, to review by the Court of Justice on appeal (see Case C-104/00 P DKV  v OHIM  [2002] ECR I-7561, paragraph 22).
45. Each of the grounds for refusal to register listed in Article 7(1)(b) of Regulation No 40/94 is independent of the others and calls for separate examination. Furthermore, the various grounds for refusal must be interpreted in the light of the public interest underlying each of them (see, to that effect, Case C-299/99 Philips  [2002] ECR I-5475, paragraph 77, and Linde , paragraphs 67 and 71).
46. The public interest taken into account in the examination of each of those grounds for refusal may, or even must, reflect different considerations, depending upon which ground for refusal is at issue.
47. In relation to the registration as a trade mark of a colour per se , not spatially defined, the Court held in Case C-104/01 Libertel  [2003] ECR I‑3793, paragraph 60, that the public interest underlying Article 3(1)(b) of First Directive 89/104, a provision which is identical to Article 7(1)(b) of Regulation No 40/94, is directed at the need not to restrict unduly the availability of colours for the other traders who offer for sale goods or services of the same type as those in respect of which registration is sought.
48. It should also be stated that there is no public interest in conferring the benefit of the full protection envisaged by Regulation No 40/94 on a trade mark which does not fulfil its essential function, namely that of ensuring that the consumer or the end user can identify the origin of the product or service concerned by allowing him to distinguish that product or service from those emanating from a different origin, without any risk of confusion.
50. 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 an appeal 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 thus confined to review of the findings of law on the pleas argued before the Court of First Instance (see the judgment in Case C‑136/92 P Commission v Brazzelli Lualdi and Others [1994] ECR I-1981, paragraph 59, and the order of 28 June 2001 in Case C-352/99 P Eridania and Others v Council [2001] ECR I-5037, paragraph 53).
56. On this point, the finding made by the Court of First Instance in paragraph 48 of the judgment in Case T-335/99 and paragraph 46 of that in Case T-336/99 that, since washing machine and dishwasher tablets are everyday consumer products, the level of attention paid by the average consumer to their shape and colours is not high is a finding of fact, which, as has been recalled in paragraph 41 of this judgment, is not subject to review by the Court of Justice on appeal, where, as in this instance, it does not entail a distortion of the factual evidence produced to the Court of First Instance.