Pi-Design AG and Others v Yoshida Metal Industry Co. Ltd and Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) (C-337/12 P and C-339/12 P) and Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) v Yoshida Metal Industry Co. Ltd (C-338/12 P and C-340/12 P).
Date: 2014-03-06
2. Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1) was repealed and replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1), which came into force on 13 April 2009. However, given the date of the facts, the present disputes continue to be governed by Regulation No 40/94, at least as regards provisions which are not strictly procedural (see, inter alia, order of 13 June 2013 in Case C‑346/12 P DMK v OHIM , paragraph 2).
42. It should be borne in mind at the outset that, according to settled case-law, trade mark law constitutes an essential element in the system of competition in the European Union. In that system, each undertaking must, in order to attract and retain customers by the quality of its goods or services, be able to have registered as trade marks signs enabling the consumer, without any possibility of confusion, to distinguish those goods or services from others which have another origin ( Lego Juris  v OHIM , paragraph 38 and the case-law cited).
43. A sign representing the shape of a product falls among the signs which may constitute a trade mark provided that it is capable of being represented graphically and capable of distinguishing the products or services of one undertaking from those of other undertakings. That follows, so far as Community trade marks are concerned, from Article 4 of Regulation No 40/94 (see, to that effect, Joined Cases C‑456/01 P and C‑457/01 P Henkel  v OHIM  [2004] ECR I‑5089, paragraphs 30 and 31, and Lego Juris  v OHIM , paragraph 39).
44. It is also apparent from the case-law of the Court that each of the grounds for refusal of registration listed in Article 7(1) of Regulation No 40/94 must be interpreted in the light of the public interest underlying that ground (see, inter alia, Henkel  v OHIM , paragraph 45, and Lego Juris  v OHIM , paragraph 43).
45. In that context, the Court has had occasion to point out that Article 7(1)(e)(ii) of Regulation No 40/94 is intended to prevent trade mark law granting an undertaking a monopoly on technical solutions or functional characteristics of a product ( Lego Juris  v OHIM , paragraph 43).
46. The Court has also had occasion to make clear that a correct application of that provision requires that the essential characteristics of a sign for which registration as a trade mark is sought be properly identified by the authority deciding on that application ( Lego Juris  v OHIM , paragraph 68).
47. The identification of those essential characteristics must be carried out on a case­by-case basis, there being no hierarchy that applies systematically between the various types of elements of which a sign may consist. In determining the essential characteristics of a sign, the competent authority may either base its assessment directly on the overall impression produced by the sign, or first examine in turn each of the components of the sign concerned ( Lego Juris  v OHIM , paragraph 70 and the case-law cited).
54. However, it follows from Lego Juris  v OHIM  that the competent authority may carry out a detailed examination that takes into account material relevant to identifying appropriately the essential characteristics of a sign, in addition to the graphic representation and any descriptions filed at the time of the application for registration.
55. The possibility afforded in Lego Juris  v OHIM  to the competent authority when examining a three-dimensional sign can be extended to the examination of any sign constituted by the shape of goods within the meaning of Article 7(1)(e)(ii) of Regulation No 40/94 (see by analogy, as regards Article 7(1)(b) of the regulation, inter alia, Henkel  v OHIM , paragraph 38, and Case C‑96/11 P Storck  v OHIM  [2012] ECR, paragraph 33).
56. It is important to ensure that economic operators cannot improperly appropriate for themselves certain signs which only incorporate a technical solution, registration of which as a trade mark would impede the use of that technical solution by other undertakings (see, to that effect, Lego Juris  v OHIM , paragraph 48).
57. It is true, according to the case-law of the Court referred to in paragraphs 31 and 32 of the judgments under appeal, first, that the graphic representation of a mark must be self-contained, easily accessible and intelligible, in order that a sign may always be perceived unambiguously and in the same way so that the mark is guaranteed as an indication of origin. Secondly, it is apparent from the case-law of the Court that the function of the graphic representability requirement is, in particular, to define the mark itself in order to determine the precise subject of the protection afforded by the registered mark to its proprietor (see, to that effect, Case C‑273/00 Sieckmann  [2002] ECR I‑11737, paragraphs 48 to 52, and Case C‑307/10 Chartered Institute of Patent Attorneys  [2012] ECR, paragraph 37).
61. It follows that, in holding that the provisions at issue preclude consideration of the actual use made of the trade mark following its registration, the General Court erred in law.
68. In the circumstances of these cases, in order to assess the single plea in law raised by Yoshida, that the First Board of Appeal of OHIM misapplied Article 7(1)(e)(ii) of Regulation No 40/94, it is necessary, inter alia, to assess the essential characteristics of the signs at issue and their technical function (see, to that effect, Lego Juris  v OHIM , paragraph 72).