Develey Holding GmbH & Co. Beteiligungs KG v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM).
Date: 2007-10-25
39. In addition, the Court has held that the provisions of that agreement are not directly applicable and are not such as to create rights upon which individuals may rely directly before the courts by virtue of Community law (see, to that effect, Case C‑149/96 Portugal  v Council  [1999] ECR I‑8395, paragraphs 42 to 48; Joined Cases C‑300/98 and C‑392/98 Dior and Others  [2000] ECR I‑11307, paragraphs 44 and 45, and Case C‑245/02 Anheuser-Busch  [2004] ECR I‑10989, paragraph 54).
48. First of all, as the Court of First Instance recalled in paragraphs 15 and 16 of the judgment under appeal, in the context of an examination of the existence of absolute grounds for refusal under Article 7(1) of Regulation No 40/94, the role of OHIM is to decide whether the application for registration of the trade mark falls under an absolute ground for refusal.
49. Further, it must be added that, under Article 74(1) of Regulation No 40/94, OHIM must examine of its own motion the relevant facts that could lead it to apply an absolute ground for refusal.
50. Finally, it must be stated that it was correctly pointed out in paragraph 21 of the judgment under appeal that, if an applicant claims that a trade mark applied for is distinctive, despite OHIM’s analysis, it is for that applicant to provide specific and substantiated information to show that the trade mark applied for has either an intrinsic distinctive character or a distinctive character acquired by usage.
58. Therefore it is possible not only that, because of linguistic, cultural, social and economic differences, a trade mark which is devoid of distinctive character in one Member State is not so in another Member State (see, to that effect, Case C‑421/04 Matratzen Concord [2006] ECR I‑2303, paragraph 25, and, by analogy, in respect of the misleading nature of a trade mark, Case C‑313/94 Graffione  [1996] ECR I‑6039, paragraph 22), but also that a mark devoid of distinctive character at Community level is not so in a Member State.
65. As regards the decision of the Deutsches Patent- und Markenamt to which Develey refers, it suffices to recall – as the Court of First Instance did in paragraph 32 of the judgment under appeal – that the Community trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it, and that that system applies independently of any national system.
66. Consequently, the mark applied for must be assessed only on the basis of relevant Community rules and the national decision can under no circumstances call in question the legality of either the contested decision or the judgment under appeal.
71. Finally, as regards the complaint that, in view of the harmonisation of trade mark law, OHIM ought to have laid down the same requirements in relation to distinctive character as the national examiner, it is clear that this complaint cannot be upheld, since, first, the Community trade mark regime is an autonomous system and, second, it is possible for a trade mark to be devoid of distinctive character in one Member State or in the Community system, but not so in another Member State.
72. In addition, as has already been pointed out in relation to the previous complaints, 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 and the mark applied for must be assessed on the basis of the relevant Community rules.
73. It follows that OHIM is under no obligation to follow the assessment of the authority with jurisdiction over trade marks in the country of origin or to lay down the same requirements, or to register the mark applied for on the basis that that national authority considered it to be merely suggestive rather than directly descriptive.
79. According to consistent case-law, the distinctive character of a trade mark within the meaning of Article 7(1)(b) of Regulation No 40/94 means that the mark in question makes it possible to identify the product in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish that product from those of other undertakings (Joined Cases C‑473/01 P and C‑474/01 P Procter & Gamble  v OHIM  [2004] ECR I‑5173, paragraph 32, and Case C‑64/02 P OHIM  v Erpo Möbelwerk  [2004] ECR I‑10031, paragraph 42). That distinctive character must be assessed, first, by reference to the products or services in respect of which registration has been applied for and, second, by reference to the perception of the relevant public ( Procter & Gamble  v OHIM , paragraph 33, and Case C‑24/05 P Storck  v OHIM  [2006] ECR I‑5677, paragraph 23).
80. According to equally consistent case-law, the criteria for assessing the distinctive character of three-dimensional marks consisting of the appearance of the product itself are no different from those applicable to other categories of trade mark. None the less, for the purpose of applying those criteria, the average consumer’s perception is not necessarily the same in t he 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 which is independent of the appearance of the products it denotes. Average consumers are not in the habit of making assumptions as to 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 may therefore prove more difficult to establish distinctiveness in relation to such a three-dimensional mark than in relation to a word or figurative mark (Case C‑136/02 P Mag Instrument  v OHIM  [2004] ECR I‑9165, paragraph 30, and Storck  v OHIM , paragraphs 24 and 25).
81. In those circumstances, 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 (Case C‑173/04 P Deutsche SiSi-Werke  v OHIM  [2006] ECR I‑551, paragraph 31, and Storck  v OHIM , paragraph 26).
82. In order to assess whether or not a trade mark has any distinctive character, the overall impression given by it must be considered. That does not mean, however, that one may not first examine each of the individual features of the get-up of that mark in turn. It may be useful, in the course of the overall assessment, to examine each of the components of which the trade mark concerned is composed (see, to that effect, Case C-286/04 P Eurocermex  v OHIM  [2005] ECR I‑5797, paragraphs 22 and 23, and the case-law cited).
91. As regards the complaint that no distinction was made between the different categories of goods covered, it must be recalled that the Court has held that, under the terms of Directive 89/104, when refusing registration of a trade mark, the competent authority is required to state in its decision its conclusion for each of the individual goods and services specified in the application for registration. However, where the same ground of refusal is given for a category or group of goods or services, the competent authority may use only general reasoning for all of the goods or services concerned (Case C-239/05 BVBA Management, Training en Consultancy  [2007] ECR I‑0000, paragraph 38).
97. In accordance with Article 225 EC and the first paragraph of Article 58 of the Statute of the Court of Justice, an appeal is limited to points of law. Therefore, the Court of First Instance has exclusive jurisdiction to make findings of fact, save where a substantive inaccuracy in its findings is attributable to the documents submitted to it, and to appraise those facts. That appraisal thus does not, save where the clear sense of the evidence before it has been distorted, constitute a point of law which is subject, as such, to review by the Court of Justice on appeal (Case C‑104/00 P DKV  v OHIM  [2002] ECR I‑7561, paragraph 22, and Joined Cases C‑456/01 P and C‑457/01 P Henkel v OHIM  [2004] ECR I‑5089, paragraph 41).