Chocoladefabriken Lindt & Sprüngli AG v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM).
Date: 2012-05-24
41. It must be remembered that, under Article 7(1)(b) of Regulation No 40/94, trade marks which are devoid of any distinctive character are not to be registered. It is settled case‑law that the distinctive character of a trade mark, within the meaning of that provision, must be assessed, first, by reference to the goods or services in respect of which registration has been sought and, second, by reference to the perception of them by the relevant public (see, inter alia, Henkel v OHIM , paragraph 35; Case C‑25/05 P Storck v OHIM  [2006] ECR I‑5719, paragraph 25; and Case C‑238/06 P Develey v OHIM  [2007] ECR I‑9375, paragraph 79).
42. Only a mark which departs significantly from the norm or customs of the industry 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 ( Deutsche SiSi-Werke v OHIM , paragraph 31).
50. Regarding the appellant’s argument that the existence of trade mark registrations in 15 Member States supports the distinctive character of the mark for which registration is sought for the purposes of Regulation No 40/94, it is necessary to note that the General Court did not err in law by finding, in accordance with settled case‑law of the Court of Justice, at paragraph 55 of the judgment under appeal, that registrations already made in Member States are only one factor which may be taken into account in connection with the registration of a Community trade mark, the mark for which registration is sought having to be assessed on the basis of the relevant European Union rules, and that it follows that OHIM is under no obligation to follow the assessment of the competent national authorities or to register the mark at issue as a Community trade mark on the basis of those considerations (see, to that effect, Develey v OHIM , paragraphs 72 and 73).
60. The Court has already held that a mark can be registered under Article 7(3) of Regulation No 40/94 only if evidence is provided that it has acquired, through the use which has been made of it, distinctive character in the part of the European Union in which it did not, ab initio , have such character (see Case C‑25/05 P Storck v OHIM , paragraph 83).
61. It was on the basis of that case‑law that the General Court came to the conclusion, at paragraph 69 of the judgment under appeal, that the mark for which registration is sought must have acquired distinctive character through use throughout the European Union. That conclusion is not vitiated by any error of law in so far as, as is apparent from paragraphs 51 and 68 of the judgment under appeal read together, the appellant has failed to establish that the mark has inherent distinctive character and that that was the case throughout the European Union. For that reason, the Court of Justice cannot uphold the appellant’s argument, and the statistics furnished in support of its argument, that the mark for which registration is sought has inherent distinctive character in 15 Member States and that, therefore, in those States, the acquisition by it of distinctive character through use does not have to be shown.
62. As for the appellant’s argument that since the Community trade mark has a unitary character, the assessment of acquisition by a mark of distinctive character through use cannot be based on individual national markets, it should be noted that, even if it is true, in accordance with the case‑law recalled at paragraph 60 of this judgment, that the acquisition by a mark of distinctive character through use must be proved for the part of the European Union in which that mark did not, ab initio , have such character, it would be unreasonable to require proof of such acquisition for each individual Member State.
63. However, as regards the present case, the General Court did not err in law because, in any event, the appellant has not sufficiently proved the acquisition, by the mark for which registration is sought, of distinctive character through use throughout the European Union.