Hauck GmbH & Co. KG v Stokke A/S and Others.
Date: 2014-09-18
17. The Court has already held that the various grounds for refusal of registration listed in Article 3 of the trade marks directive must be interpreted in the light of the public interest underlying each of them (see, to that effect, judgment in Windsurfing Chiemsee , C‑108/97 and C‑109/97, EU:C:1999:230, paragraphs 25 to 27, and judgment in Philips , C‑299/99, EU:C:2002:377, paragraph 77).
18. In that regard, concerning the second indent of Article 3(1)(e) of the trade marks directive the Court has stated that the rationale of the grounds for refusal of registration laid down in Article 3(1)(e) of the trade marks directive is to prevent trade mark protection from granting its proprietor a monopoly on technical solutions or functional characteristics of a product which a user is likely to seek in the products of competitors (judgment in Philips , EU:C:2002:377, paragraph 78, and — regarding 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), a provision which is essentially identical to Article 3(1)(e) of the trade marks directive — judgment in Lego Juris  v OHIM , C‑48/09 P, EU:C:2010:516, paragraph 43).
19. The immediate aim of the prohibition on registering purely functional shapes set out in the second indent of Article 3(1)(e) of the trade marks directive and the prohibition on registering shapes which give substantial value to the goods set out in the third indent of that provision is to prevent the exclusive and permanent right which a trade mark confers 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 Lego Juris v OHIM , EU:C:2010:516, paragraph 45).
21. Consequently, in order to apply the first indent of Article 3(1)(e) of the trade marks directive correctly, it is necessary to identify the essential characteristics — that is, the most important elements — of the sign concerned on a case-by-case basis, that assessment being based either on the overall impression produced by the sign or on an examination of each the components of that sign in turn (see, to that effect, judgment in Lego Juris  v OHIM , EU:C:2010:516, paragraphs 68 to 70).
22. In that regard, it must be emphasised that the ground for refusal of registration set out in the first indent of Article 3(1)(e) of the trade marks directive cannot be applicable where the trade mark application relates to a shape of goods in which another element, such as a decorative or imaginative element, which is not inherent to the generic function of the goods, plays an important or essential role (see, to that effect, judgment in Lego Juris  v OHIM , EU:C:2010:516, paragraphs 52 and 72).
33. Moreover, regarding the impact of the target public, the Court has observed that, in contrast to the situation referred to in Article 3(1)(b) of the trade marks directive, where the perception of the target public must be taken into account since it is essential for the purposes of determining whether the sign filed for registration as a trade mark enables the goods or services concerned to be recognised as originating from a particular undertaking, such an obligation cannot be imposed in the context of paragraph 1(e) of that article (see, to that effect, judgment in Lego Juris  v OHIM , EU:C:2010:516, paragraph 75).
34. The presumed perception of the sign by the average consumer is not a decisive element when applying the ground for refusal set out in the third indent of the latter provision, but may, at most, be a relevant criterion of assessment for the competent authority in identifying the essential characteristics of that sign (see, to that effect, judgment in Lego Juris  v OHIM , EU:C:2010:516, paragraph 76).
39. It is clear from this wording that the three grounds for refusal of registration set out in that provision operate independently of one another: the fact that they are set out as successive points, coupled with the use of the word ‘exclusively’, shows that each of those grounds must be applied independently of the others.
40. Thus, if any one of the criteria listed in Article 3(1)(e) of the trade marks directive is satisfied, a sign consisting exclusively of the shape of the product or of a graphic representation of that shape cannot be registered as a trade mark (judgment in Philips , EU:C:2002:377, paragraph 76, and judgment in Benetton Group , C‑371/06, EU:C:2007:542, paragraph 26, third indent).
41. In that regard, the fact that the sign in question could be denied registration on the basis of a number of grounds for refusal is irrelevant so long as any one of those grounds fully applies to that sign.
42. In addition, it must be pointed out that — as the Advocate General indicated in point 99 of his Opinion — the public interest objective underlying the application of the three grounds for refusal of registration set out in Article 3(1)(e) of the trade marks directive precludes refusal of registration where none of those three grounds is fully applicable.