Société de Produits Nestlé SA v Cadbury UK Ltd.
Date: 2015-09-16
30. It is important to recall that, under Article 83 of the Rules of Procedure, the Court may at any time, after hearing the Advocate General, order the reopening of the oral part of the procedure, in particular where it considers that it lacks sufficient information, where a party has, after the close of that part of the procedure, submitted a new fact which is of such a nature as to be a decisive factor for the decision of the Court, or where the case must be decided on the basis of an argument which has not been debated between the parties or the persons referred to in Article 23 of the Statute of the Court of Justice of the European Union (see judgment in Commission  v Parker-Hannifin , C‑434/13 P, EU:C:2014:2456, paragraph 27 and the case-law cited therein).
32. In addition, pursuant to the second paragraph of Article 252 TFEU, it is the duty of the Advocate General, acting with complete impartiality and independence, to make, in open court, reasoned submissions on cases which, in accordance with the Statute of the Court of Justice, require the Advocate General’s involvement. However, the Court is bound neither by the Advocate General’s Opinion nor by the reasoning on which it is based (see judgment in Commission  v Parker-Hannifin , C‑434/13 P, EU:C:2014:2456, paragraph 29 and the case-law cited therein).
35. As is apparent from the judgment in Oberbank (C‑217/13 and C‑218/13, EU:C:2014:2012, paragraph 31), Directive 2008/95 merely codified Directive 89/104 in such a way that, in relation to the equivalent provisions of Directive 89/104, the provisions of Directive 2008/95 at issue in the present case were not substantively amended as regards their wording, context or purpose. The references to the case-law relating to Directive 89/104 are therefore still relevant for the purposes of the present case.
38. Since Article 3(1)(e) of Directive 2008/95 is a preliminary obstacle that may prevent a sign consisting exclusively of the shape of goods from being registered, it follows that if one of the three criteria listed in that provision is satisfied, that sign cannot be registered as a trade mark (see, to that effect, judgments in Philips , C‑299/99, EU:C:2002:377, paragraph 76, and Linde and Others , C‑53/01 to C‑55/01, EU:C:2003:206, paragraph 44).
39. Moreover, a sign which is refused registration under Article 3(1)(e) of Directive 2008/95 can never acquire a distinctive character for the purposes of Article 3(3) thereof by the use made of it (see, to that effect, judgments in Philips , C‑299/99, EU:C:2002:377, paragraph 75, and Linde and Others , C‑53/01 to C‑55/01, EU:C:2003:206, paragraph 44).
43. It must be recalled at the outset that the various grounds for refusal of registration listed in Article 3 of Directive 2008/95 must be interpreted in the light of the public interest underlying each of them (see, to that effect, judgments in Windsurfing Chiemsee , C‑108/97 and C‑109/97, EU:C:1999:230, paragraphs 25 to 27, and Philips , C‑299/99, EU:C:2002:377, paragraph 77).
44. The rationale of the grounds for refusal of registration laid down in Article 3(1)(e) of Directive 2008/95 is to prevent trade mark protection from granting its proprietor a monopoly on technical solutions or functional characteristics of goods which a user is likely to seek in the goods of competitors (see, to that effect, judgments in Philips , C‑299/99, EU:C:2002:377, paragraph 78, and Hauck , C‑205/13, EU:C:2014:2233, paragraph 18).
45. The aim is to prevent the exclusive and permanent right conferred by a trade mark from serving to extend indefinitely the life of other rights which the EU legislature has sought to make subject to limited periods (see, to that effect, judgment in Hauck , C‑205/13, EU:C:2014:2233, paragraph 19, and, in relation to Article 7(1)(e) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), that provision being essentially identical to Article 3(1)(e) of Directive 2008/95, the judgment in Lego Juris  v OHIM , C‑48/09 P, EU:C:2010:516, paragraph 45).
46. As regards whether the separate grounds for refusal may be applied concurrently, the Court has stated that it is clear from the wording of Article 3(1)(e) of Directive 2008/95 that the three grounds for refusal of registration operate independently of one another, that is to say, each of them must be applied independently of the others (see, to that effect, judgment in Hauck , C‑205/13, EU:C:2014:2233, paragraph 39).
47. The Court has therefore concluded that if any one of the criteria listed in that provision is satisfied, a sign consisting exclusively of the shape of goods cannot be registered as a trade mark. It is irrelevant whether the sign in question could be denied registration on the basis of a number of grounds for refusal so long as any one of those grounds is fully applicable to that sign (see, to that effect, judgment in Hauck , C‑205/13, EU:C:2014:2233, paragraphs 40 and 41).
49. The public interest objective underlying the application of the three grounds for refusal of registration set out in Article 3(1)(e) of Directive 2008/95 precludes refusal of registration where none of those three grounds is fully applicable (judgment in Hauck , C‑205/13, EU:C:2014:2233, paragraph 42).
56. Moreover, it follows from the case-law that the manufacturing method is not decisive in the context of the assessment of the essential functional characteristics of the shape of goods either. The registration of a sign consisting of a shape attributable solely to the technical result must be refused even if that technical result can be achieved by other shapes, and consequently by other manufacturing methods (see, to that effect, judgment in Philips , C‑299/99, EU:C:2002:377, paragraph 83).
59. It must be recalled at the outset in this connection that the essential function of a trade mark is to guarantee the identity of the origin of the designated goods or services to the consumer or end-user by enabling him, without any possibility of confusion, to distinguish the goods or services from those which have another origin (judgment in Philips , C‑299/99, EU:C:2002:377, paragraph 30).
60. Through its distinctive character, a trade mark must serve to identify the goods or services covered by that mark as originating from a particular undertaking, and thus to distinguish the goods or services in question from those of other undertakings (see, to that effect, judgments in Windsurfing Chiemsee , C‑108/97 and C‑109/97, EU:C:1999:230, paragraph 46; Philips , C‑299/99, EU:C:2002:377, paragraph 35, and Oberbank , C‑217/13 and C‑218/13, EU:C:2014:2012, paragraph 38).
61. That distinctive character must be assessed in relation, on the one hand, to the goods or services covered by that mark and, on the other, to the presumed expectations of the relevant class of persons, that is to say, an average consumer of the category of goods or services in question, who is reasonably well-informed and reasonably observant and circumspect (see, to that effect, judgments in Koninklijke KPN Nederland , C‑363/99, EU:C:2004:86, paragraph 34 and the case-law cited therein; Nestlé , C‑353/03, EU:C:2005:432, paragraph 25, and Oberbank , C‑217/13 and C‑218/13, EU:C:2014:2012, paragraph 39).
62. A sign’s distinctive character, which thus constitutes one of the general conditions to be met before that sign can be registered as a trade mark, may be intrinsic, as provided for in Article 3(1)(b) of Directive 2008/95, or may have been acquired by the use made of that sign, as provided for in Article 3(3) of that directive.
63. So far as, specifically, the acquisition of distinctive character in accordance with Article 3(3) of Directive 2008/95 is concerned, the expression ‘use of the mark as a trade mark’ must be understood as referring solely to use of the mark for the purposes of the identification, by the relevant class of persons, of the goods or services as originating from a given undertaking (judgment in Nestlé , C‑353/03, EU:C:2005:432, paragraph 29).
64. Admittedly, the Court has acknowledged that such identification, and thus acquisition of distinctive character, may be as a result both of the use, as part of a registered trade mark, of a component thereof and of the use of a separate mark in conjunction with a registered trade mark. However, it has added that in both cases it is important that, in consequence of such use, the relevant class of persons actually perceive the goods or services, designated exclusively by the mark applied for, as originating from a given undertaking (judgment in Nestlé , C‑353/03, EU:C:2005:432, paragraph 30, and, in connection with Regulation No 40/94, Article 7(3) of which corresponds, in essence, to Article 3(3) of Directive 2008/95, the judgment in Colloseum Holding , C‑12/12, EU:C:2013:253, paragraph 27).
65. Therefore, regardless of whether the sign is used as part of a registered trade mark or in conjunction with the registered trade mark, the fundamental condition is that, as a consequence of that use, the sign for which registration as a trade mark is sought may serve to identify, in the minds of the relevant class of persons, the goods to which it relates as originating from a particular undertaking (see, to that effect, judgment in Colloseum Holding , C‑12/12, EU:C:2013:253, paragraph 28).