Deutsche SiSi-Werke GmbH & Co. Betriebs KG v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM).
Date: 2006-01-12
25. In accordance with established case-law, 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 Joined Cases C‑456/01 P and C‑457/01 P Henkel  v OHIM  [2004] ECR I‑5089, paragraph 35 and case-law cited).
27. According to equally established case-law, 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 (see Henkel  v OHIM , paragraph 38, and Case C‑136/02 P Mag Instrument  v OHIM  [2004] ECR I‑9165, paragraph 30).
28. None the less, as the Court of First Instance correctly noted in paragraph 37 of the judgment under appeal, 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 appearance of the product itself as it is in the case of a word or figurative mark consisting 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, and Mag Instrument  v OHIM , paragraph 30).
29. With regard, in particular, to three-dimensional trade marks consisting of the packaging of goods, such as liquids, which are packaged in trade for reasons linked to the very nature of the product, the Court has held that they must enable average consumers of the goods in question, who are reasonably well informed and reasonably observant and circumspect, to distinguish the product concerned from those of other undertakings without conducting an analytical or comparative examination and without paying particular attention (see, to that effect, with regard 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 provision is identical to Article 7(1)(b) of Regulation No 40/94, Case C‑218/01 Henkel  [2004] ECR I‑1725, paragraph 53).
31. According to established case-law, 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 ( Henkel  v OHIM , paragraph 39, and Mag Instrument  v OHIM , paragraph 31).
33. In particular, when, as in the present case, the trade mark for which registration is sought consists of the three-dimensional shape of the packaging of the goods in question – a fortiori where the goods, because of their very nature, must be packaged in order to be marketed, so that the packaging chosen imposes its shape on the goods and, for the purposes of examining an application for registration as a mark, must be assimilated to the shape of the product ( Henkel , supra, paragraph 33) –, the relevant norm or customs may be those which apply in the sector of the packaging of goods which are of the same type and intended for the same consumers as those goods in respect of which registration is sought.
35. Second, restriction of the sector in which the comparison is to be made falls within the appraisal of the facts. 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, which is not claimed in this case, 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, and Mag Instrument  v OHIM , paragraph 39).
45. With regard to the first part of the plea, 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 , paragraph 34, and Mag Instrument  v OHIM , paragraph 29).
47. Secondly, inasmuch as it complains that the Court of First Instance held, in paragraphs 44 to 52 of the judgment under appeal, that the three-dimensional shapes of the pouches in respect of which registration is sought as Community trade marks do not have a sufficient number of design features to fulfil their function of indicating origin, that part of the plea seeks to challenge the factual assessment made by the Court of First Instance and must be declared inadmissible for the reasons set out in paragraph 35 of the present judgment.
48. With regard to the second part of the second plea, it is necessary to point out, first of all, that decisions concerning registration of a sign as a Community trade mark which the Boards of Appeal of OHIM are called on to take under Regulation No 40/94 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, as the Court of First Instance essentially held in paragraph 55 of the judgment under appeal, the legality of those decisions must be assessed solely on the basis of that regulation and not on the basis of a previous decision-making practice of those boards (Case C‑37/03 P BioID  v OHIM  [2005] ECR I-0000, paragraph 47).
49. Secondly, the Court of First Instance was correct in holding, in paragraph 56 of the judgment under appeal, that registrations already made in Member States are only factors which may merely be taken into consideration, without being given decisive weight, for the purposes of registering a Community trade mark (see, to that effect, with regard to registration of national trade marks in various Member States by application of Directive 89/104, Henkel , paragraphs 62 and 63). It is appropriate to add that there is no provision in Regulation No 40/94 requiring OHIM or, on appeal, the Court of First Instance, to come to the same conclusions as those arrived at by national authorities in similar circumstances (see, to that effect, DKV  v OHIM , paragraph 39).
59. According to established case-law, each of the grounds for refusal to register listed in Article 7(1) of Regulation No 40/94 is independent of the others and requires separate examination. Moreover, it is appropriate to interpret those grounds for refusal in the light of the general interest which underlies each of them. The general interest to be taken into consideration when examining each of those grounds for refusal may or even must reflect different considerations according to the ground for refusal in question ( Henkel  v OHIM , paragraphs 45 and 46; Case C‑329/02 P SAT.1  v OHIM  [2004] ECR I‑8317, paragraph 25, and BioID  v OHIM , paragraph 59).
60. Article 7(1)(b) of Regulation No 40/94 is intended to preclude registration of trade marks which are devoid of distinctive character which alone renders them capable of fulfilling the essential function of a trade mark, 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 (see, in particular, Case 102/77 Hoffmann-La Roche  [1978] ECR 1139, paragraph 7; Case C‑299/99 Philips  [2002] ECR I-5475, paragraph 30, and SAT.1  v OHIM , paragraph 23).
61. In view of the extent of the protection afforded to a trade mark by Regulation No 40/94, the public interest underlying Article 7(1)(b) of that regulation is, manifestly, indissociable from the essential function of a trade mark ( SAT.1  v OHIM , paragraph 27, and BioID  v OHIM , paragraph 60).
62. By prohibiting the registration as Community trade marks of signs or indications which may serve, in trade, to designate characteristics of the goods or services in respect of which registration is sought, Article 7(1)(c) of Regulation No 40/94 pursues an aim which is in the public interest, namely that such signs or indications may be freely used by all. That provision accordingly prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks (see Case C‑191/01 P OHIM  v Wrigley  [2003] ECR I‑12447, paragraph 31, and orders in Case C‑326/01 P Telefon & Buch  v OHIM  [2004] ECR I‑1371, paragraph 27, and Case C150/02 P Streamserve  v OHIM  [2004] ECR I‑1461, paragraph 25).
63. In those circumstances, as the Court has already held, the criterion according to which trade marks which are capable of being commonly used, in trade, for the presentation of the goods or services in question may not be registered is relevant in the context of Article 7(1)(c) of Regulation No 40/94 but it is not the yardstick by which Article 7(1)(b) must be interpreted ( SAT.1  v OHIM , paragraph 36, and BioID  v OHIM , paragraph 62).