Elenco dei mandatari abilitati ai sensi dell'articolo 89 del regolamento .....
cordance with honest practices in indus- .... practice constitutes in substance the
ex-.
CONTENTS
OJ 10/2004 Page List of professional representatives ...............................................................................................
1176
Case-law of the Court of Justice of the European Communities • Judgment of the Court of Justice of 7 January 2004 in Case C-100/02 (Putsch) ...................
1183
• Judgment of the Court of Justice of 29 April 2004 in Joined Cases C-468/01 P to C-472/01 P (Three-dimensional tablets for washing machines or dishwashers) .....................................
1197
Case-law of the Court of First Instance of the European Communities • Judgment of the Court of First Instance (Second Chamber) of 22 June 2004 in Case T-185/02 (Picaro/Picasso) .........................................................................................................................
1237
CONTENTS
LISTA DE LOS REPRESENTANTES AUTORIZADOS ANTE LA OFICINA DE ARMONIZACIÓN DEL MERCADO INTERIOR (MARCAS, DIBUJOS Y MODELOS) LISTE DER ZUGELASSENEN VERTRETER BEIM HARMONISIERUNGSAMT FÜR DEN BINNENMARKT (MARKEN, MUSTER UND MODELLE) LIST OF PROFESSIONAL REPRESENTATIVES BEFORE THE OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS) LISTE DES MANDATAIRES AGRÉÉS AUPRÈS DE L’OFFICE DE L’HARMONISATION DANS LE MARCHÉ INTÉRIEUR (MARQUES, DESSINS ET MODÈLES) ELENCO DEI MANDATARI ABILITATI PRESSO L’UFFICIO PER L’ARMONIZZAZIONE NEL MERCATO INTERNO (MARCHI, DISEGNI E MODELLI) (Véase también las comunicaciones del presidente de la Oficina / Siehe auch die Mitteilungen des Präsidenten des Amtes / See also the communications of the President of the Office / Voir aussi les communications du président de l’Office / Vedi anche le comunicazioni del presidente dell’Ufficio) n° 1/95, DO/ABI./OJ/JO/GU n° 1/95, p. 16 n° 2/99, DO/ABI./OJ/JO/GU n° 7-8/99, p. 1003 n° 10/02, DO/ABI./OJ/JO/GU n° 9/02, p. 1636 n° 12/02, DO/ABl./0J/JO/GU n° 3/03, p. 525 PARTE A: / TEIL A: / PART A: / PARTIE A: / PARTE A: Lista de representantes autorizados contemplada en el artículo 89 del Reglamento sobre la marca comunitaria Liste der zugelassenen Vertreter gemäß Artikel 89 der Gemeinschaftsmarkenverordnung List of professional representatives according to Article 89 Community Trade Mark Regulation Liste des mandataires agréés conformément à l’article 89 du règlement sur la marque communautaire Elenco dei mandatari abilitati ai sensi dell’articolo 89 del regolamento sul marchio comunitario Inscripciones / Eintragungen / Entries / Inscriptions / Iscrizioni
Česká republika LANGROVÁ, Irena (CZ) Skrétova 48 301 00 Plzeò ŠTROS, David (CZ) Husova 5 110 00 Prague 1 JAVOØÍKOVÁ, Jarmila (CZ) Louky 304 763 02 Zlín 4
Deutschland HILSCHER, Holger (DE) Boetticherstr. 3B 14195 Berlin SCHIPPLING, Susanne (DE) ISENBRUCK & PARTNER Technologiepark Heidelberg Biopark Im Neuenheimer Feld 582 69120 Heidelberg
CONTENTS
WASNER, Marita (DE) Esterwagnerstr. 28 85635 Höhenkirchen-Siegertsbrunn BOHLINGER, Ines (DE) KANZLEI ISENBRUCK UND KOLLEGEN Theodor-Heuss-Anlage 12 68165 Mannheim CIESLA, Ulrike (DE) HOFFMANN · EITLE Arabellastr. 4 81925 München
KOVÁCS, Gábor (HU) DANUBIA SZABADALMI ÉS VÉDJEGY IRODA KFT. Bajcsy-Zsilinszky út 16. 1368 Budapest KOVÁRI, György (HU) ADVOPATENT OFFICE OF PATENT AND TRADEMARK ATTORNEYS Fõ u. 19 1011 Budapest
EXNER, Stefan (DE) VONNEMANN KLOIBER & KOLLEGEN Belgradstr. 1 80796 München
MÁK, Añdrás (HU) S.B.G. & K. SZABADALMI ÜGYVIVPI IRODA Andrássy út 113 1062 Budapest
SCHAEFER, Sebastian (DE) MANITZ, FINSTERWALD & PARTNER GBR Martin-Greif-Str. 1 80336 München
PRÉDA, Gábor (HU) Dévai u. 22-24/B 1134 Budapest
SCHMIDT, Steffen (DE) BOEHMERT & BOEHMERT Pettenkoferstr. 20-22 80336 München VON CAMPENHAÜSEN, Harald (DE) MÜLLER - BORÉ & PARTNER Grafinger Str. 2 81671 München BEHRENS, Ralf (DE) Gerokstr. 1 70188 Stuttgart
SIKOS, Robert (HU) DANUBIA SZABADALMI ÉS VÉDJEGY IRODA KFT. Bajcsy-Zsilinszky út 16. 1368 Budapest
Polska
España
ROZEK, Ryszard (PL) PPUP POCZTA POLSKA Plac Ma³achowskiego 200-940 Warszawa
FÁBREGA SABATÉ, Xavier (ES) DR. ING. M. CURELL SUÑOL I.I. S.L. Passeig de Grácia, 65 bis 08008 Barcelona
¯UK, Anna (PL) Przemys³owy Instytut Telekomunikacji ul. Poligonowa 30 04-051 Warszawa
Italia GRIMALDO, Andrea (IT) STUDIO KARAGHIOSOFF E FRIZZI S.A.S. DI KARAGHIOSOFF GIORGIO A E C. Via Pecorile, 25 17015 Celle Ligure (Savona)
Latvija ŠMĪDEBERGA, Ināra (LV) AGENTŪRA INTELS Akadēmijas lauk. 1-1006 1050 Rīga
United Kingdom ARMSTRONG, Niki (GB) BP LUBRICANTS UK Wakefield House Pipers Way Swindon, Oxfordshire SN3 1RE RATLIFF, Ismay Hilary (GB) CROWN PACKAGING UK PLC Downsview Road, Wantage, Wiltshire OX12 9BP
Benelux Magyarország Nederland KARÁCSONYI, Béla (HU) ADVOPATENT OFFICE OF PATENT AND TRADEMARK ATTORNEYS Fõ u. 19 1011 Budapest
PRUIJSSERS, Alexander (NL) NOVAGRAAF ARNHEM B.V. Meander 251 6825 MC Arnhem
CONTENTS
SPOOR, Maria Anna Henrica (NL) MERKENBUREAU KNIJFF & PARTNERS B.V. Leeuwenveldseweg 12 1382 LX Weesp
STEGEMAN, Leontine Katinka (NL) MERKENBUREAU KNIJFF & PARTNERS B.V. Leeuwenveldseweg 12 1382 LX Weesp
Modificaciones / Änderungen / Amendements / Modifications / Modifiche Česká republika DANÌK, Vilém (CZ) DANÌK & KINDLOVÁ Vinohradská 45 120 00 Prague KLEINTOVÁ, Eva (CZ) ÈERVENKA, KLEINTOVÁ, TURKOVÁ PATENTOVÁ, ZNÁMKOVÁ A ADVOKÁTNÍ KANCELÁØ Budeèská 6/974 120 00 Praha 2 TURKOVÁ, Jana (CZ) ÈERVENKA, KLEINTOVÁ, TURKOVÁ PATENTOVÁ, ZNÁMKOVÁ A ADVOKÁTNÍ KANCELÁØ Budeèská 6 120 00 Praha 2 ÈERVENKA, Josef (CZ) ÈERVENKA, KLEINTOVÁ, TURKOVÁ PATENTOVÁ, ZNÁMKOVÁ A ADVOKÁTNÍ KANCELÁØ Budeèská 6 120 00 Praha 2
Danemark OLSON, Peter Gustav (US) PLESNER SVANE GRØNBORG Amerika Plads 37 2100 Copenhagen Ø
Deutschland VON LETTOW-VORBECK, Christian (DE) Corellistr. 27 40593 Düsseldorf SASSE, Stefan (DE) WHITE & CASE LLP Jungfernstieg 51 20354 Hamburg LAUERWALD, Jörg (DE) HEIDELBERGER DRUCKMASCHINEN AG Intellectual Property Kürfürstenanlage 52-60 69115 Heidelberg
NAESSENS, Stephan (DE) Gebhartstr. 2a 82069 Hohenschäftlarn WITZANY, Manfred (AT) Falkenstr. 4 85049 Ingolstadt FRANKE, Ralf (DE) Sauerbruchweg 8 41564 Kaarst FUCHS, Alexander (DE) EPPING HERMANN FISCHER PATENTANWALTSGESELLSCHAFT MBH Ridlerstr. 55 80339 München HEIDRICH, Frank (DE) EPPING HERMANN FISCHER PATENTANWALTSGESELLSCHAFT MBH Ridlerstr. 55 80339 München KLAIBER, Kilian (DE) JONES DAY Prinzregentenstr. 11 80538 München SCHEELE, Friedrich (DE) STOLMAR, HINKELMANN UND PARTNET GBR Blumenstr. 17 80331 München SCHENK, Angelika (DE) BEETZ & PARTNER Steinsdorfstr. 10 80538 München WILHELM, Ludwig (DE) Mannesmann Plastics Machinery GmbH Krauss-Maffei-Str. 2 80997 München GARRELS, Sabine (DE) SCHNICK & GARRELS Schonenfahrerstr. 7 18057 Rostock
España DÍAZ ORUETA, Luis Alfonso (ES) C/ Mesena, 80 Torre de Operaciones, 1a planta 28033 Madrid
CONTENTS
France
Sverige
GRYNWALD, Albert (FR) OFFICE BLETRY 23, rue du Renard 75004 Paris
BONAIR, Markus (SE) ALBIHNS GÖTEBORG AB Torrgatan 8 401 22 Göteborg
LYNDE, Stéphane (FR) LYNDE & ASSOCIES 4, rue Alfred de Vigny 75008 Paris
United Kingdom
GRYNWALD, Nathalie (FR) OFFICE BLETRY 3, rue du Renard 75004 Paris Cedex 09
ATKINSON, Ralph (GB) ATKINSON BURRINGTON 28 President Buildings President Way Atlas, Sheffield S4 7UR
DUPIRE, Christelle (FR) MATKOWSKA & ASSOCIÉS 10, avenue de la Créativité 59650 Villeneuve d’Asq
BURRINGTON, Alan Graham Headford (GB) ATKINSON BURRINGTON 28 President Buildings President Way Atlas, Sheffield S4 7UR
Ireland
POVID, Victor Paul (GB) ATKINSON BURRINGTON 28 President Buildings President Way Atlas, Sheffield S4 7UR
DOCKERY, Louis J. (IE) EAMONN GREENE & CO SOLICITORS 7 Northumberland Road 4 Dublin PAUL, Richard (IE) NATIONAL CENTRE FOR SENSOR RESEARCH Dublin City University Glasnevin 9 Dublin
Italia CATTANEO, Elisabetta (IT) PERANI MEZZANOTTE & PARTNERS Piazza San Babila, 5 20122 Milano CONTESSINI, Pier Carlo (IT) PORTA, CHECCACCI & ASSOCIATI S.P.A. Via Trebbia, 20 20135 Milano
HILLIER, Peter (XX) MARKS & CLERK 27 Imperial Square Cheltenham GL50 1RQ CHAPMAN, Sheila Agnes Fife (GB) MARKS & CLERK 10 Hope Street Edinburgh EH2 4DB NEWELL, Campbell (GB) CRUIKSHANK & FAIRWEATHER 10 Hope Street Edinburgh EH2 4DB SZCZUKA, Jan Tymoteusz (GB) MARKS & CLERK 10 Hope Street Edinburgh EH2 4DB HOLLINGHURST, Antony (GB) BRITAX CHILDCARE LIMITED 5 Peacock Close Fareham, PO16 8YG
ALBERA, Adriano (IT) Via Roma, 45 10045 Orbassano TO
MORRALL, Roger (GB) RM PATENT SERVICES Twin Oaks, 88 Howes Lane Finham, CV3 6PJ
DALLAGLIO, Fabrizio (IT) ING. DALLAGLIO S.R.L. Viale Mentana, 92/C 43100 Parma
FARROW, Robert Michael (GB) ROVER GROUP LTD. PATENT DEPARTMENT Patent Department (53G16/4) Banbury Road Gaydon, CV35 0RR
FAIA, Monica (IT) JACOBACCI & PARTNERS S.P.A. Via delle Quattro Fontane, 15 00184 Roma
CHAPMAN, Paul Gilmour (GB) MARKS & CLERK 19 Royal Exchange Square Glasgow G1 3AE
CONTENTS
DOHERTY, Miriam (GB) MARKS & CLERK 19 Royal Exchange Square Glasgow G1 3AE FRENCH, Ruth (GB) MARKS & CLERK 19 Royal Exchange Square Glasgow G1 3AE HORNER, Martin Grenville (GB) MARKS & CLERK 19 Royal Exchange Square Glasgow G1 3AE KINSLER, Maureen (GB) MARKS & CLERK 19 Royal Exchange Square Glasgow G1 3AE MACDOUGALL, Donald Carmichael (GB) MARKS & CLERK 19 Royal Exchange Square Glasgow G1 3AE MORELAND, David (GB) MARKS & CLERK 19 Royal Exchange Square Glasgow G1 3AE NAISMITH, Robert Stewart (GB) MARKS & CLERK 19 Royal Exchange Square Glasgow G1 3AE SHANKS, Andrew (GB) MARKS & CLERK 19 Royal Exchange Square Glasgow G1 3AE THOMSON, Douglas Crawford (GB) MARKS & CLERK 19 Royal Exchange Square Glasgow G1 3AE ORR, Robert (GB) MARKS & CLERK 19 Royal Exchange Square Glasgow, Scotland G1 3AE WILSON, Gary (GB) MARKS & CLERK 19 Royal Exchange Square Glasgow, Scotland G1 3AE FLYNN, Michael Joseph (IE) FLYNN-IP 10 Norton Road Loddon, Norwich NR14 6JN EDER, Ephry (GB) E. EDER & CO Suite 4, Ground Floor No. 3 Accommodation Road London NW11 8ED WANT, Clifford James (GB) WILDMAN HARROLD UK LLP 11th Floor, Tower 3 Clements Inn London WC2A 2AZ
GRINROD, Kerry Ann (GB) FREETH CARTWRIGHT LLP Intellectual Property & Technology Department Cumberland Court 80 Mount Street Nottingham NG1 6HH KARAT, Paulo Whitfield (GB) FREETH CARTWRIGHT LLP Intellectual Property & Technology Department Cumberland Court 80 Mount Street Nottingham NG1 6HH MARGIOTTA-MILLS, Andrew (GB) FREETH CARTWRIGHT LLP Intellectual Property & Technology Department Cumberland Court 80 Mount Street Nottingham NG1 6HH MORRIS, Margaret (GB) THE BOOTS COMPANY PLC Group Intellectual Property Nottingham NG90 4GR HIDDLESTON, Richard Mark (GB) ELKINGTON AND FIFE LLP Prospect House 8 Pembroke Road Sevenoaks, TN13 1XR GROOM, John Alexander (GB) GROOM WILKES & WRIGHT LLP The Haybarn Upton End Farm Business Park Meppershall Road Shillington, SG5 3PF RUNDLE, Terry Roy (GB) 24 Belmont Gardens Raunds Wellingborough, NN9 6RN
Benelux Nederland DE WILDE, Saskia Maria (NL) MARKMATTERS Pamassusweg 126 1076 AT Amsterdam Luxemburg SCHROEDER, Corinne (BB) MARKS & CLERK 5, place de la Gare 1017 Luxembourg WEYLAND, J.J.P. (LU) MARKS & CLERK 5, place de la Gare 1017 Luxembourg
CONTENTS
Cancelaciones / Löschungen / Deletions / Radiations / Radiazioni Deutschland
France
GAUGER, Hans-Peter (DE) MÜLLER, SCHUPFNER & GAUGER Maximilianstr. 6 80539 München
SAVOURET, Etienne-Marie (FR) 53, Quai des Grands Augustins 75006 Paris
HACKEL, Stefanie (DE) Giesecke & Devrient GmbH Prinzregentenstr. 159 81677 München
MARTIN, Jean-Paul (FR) CABINET LAVOIX 2, place d’Estienne d’Orves 75441 Paris Cédex 09
GAISER, Hartmut (DE) Sulzbacher Str. 39 90489 Nürnberg
Italia
MÖBUS, Rudolf (DE) MÖBUS Hindenburgstr. 65 72762 Reutlingen
VATTI, Paolo (IT) FUMERO STUDIO CONSULENZA BREVETTI S.N.C. Via S. Agnese, 12 20123 Milano
PARTE B: / TEIL B: / PART B: / PARTIE B: / PARTE B: Lista especial de representantes autorizados contemplada en el artículo 78 del Reglamento sobre los dibujos y modelos comunitarios Besondere Liste zugelassener Vertreter gemäß Artikel 78 der Gemeinschaftsgeschmacksmusterverordnung Special list of professional representatives according to Article 78 Community Designs Regulation Liste spécifique des mandataires agréés conformément à l’article 78 du règlement sur les dessins ou modèles communautaires Elenco speciale di mandatari abilitati ai sensi dell’articolo 78 del regolamento sui disegni e modelli comunitari Inscripciones / Eintragungen / Entries / Inscriptions / Iscrizioni United Kingdom MAKOVSKI, Priscilla Mary (GB) BARKER BRETTELL 138 Hagley Road Edgbaston Birmingham B16 9PW
Modificaciones / Änderungen / Amendements / Modifications / Modifiche United Kingdom DOCHERTY, Andrew John (GB) MARKS & CLERK 19 Royal Exchange Square Glasgow, Scotland G1 3AE
PROBERT, Gareth David (GB) ERIC POTTER CLARKSON Park View House 58 The Ropewalk Nottingham NG1 5DD
CONTENTS
CASE-LAW OF THE COURT OF JUSTICE OF THE EUROPEAN COMMUNITIES (*) JUDGMENT OF THE COURT OF JUSTICE of 7 January 2004 in Case C-100/02 (reference to the Court under Article 234 EC EC by the Bundesgerichtshof (Germany)): Gerolsteiner Brunnen GmbH & Co. and Putsch GmbH
parities which may impede the free movement of goods and freedom to provide services and may distort competition within the common market. 4 Article 6(1)(b) of that directive, entitled Limitation of the effects of a trade mark, provides: 1. The trade mark shall not entitle the proprietor to prohibit a third party from using, in the course of trade, ...
(Directive 89/104/EEC - Limitation of the effects of a trade mark in relation to indications concerning geographical origin - Use of a geographical indication as a trade mark as an element of use in accordance with honest practices in industrial or commercial matters)
(b) indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of the service, or other characteristics of goods or services; ...
(Language of the case: German) 1 By order of 7 February 2002, received at the Court on 18 March 2002, the Bundesgerichtshof (Federal Court of Justice) referred to the Court for a preliminary ruling under Article 234 EC two questions on the interpretation of Article 6(1)(b) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1).
2 Those questions were raised in proceedings between Gerolsteiner Brunnen GmbH & Co. (Gerolsteiner Brunnen) and Putsch GmbH (Putsch) concerning the alleged infringement of Gerolsteiner Brunnen’s trade mark rights by Putsch’s use of the term KERRY Spring on labels on soft drinks marketed by Putsch.
provided he uses them in accordance with honest practices in industrial or commercial matters. 5 The Gesetz über den Schutz von Marken und sonstigen Kennzeichen (German law on the protection of trade marks and other distinctive signs) of 25 October 1994 (BGBl. 1994 I, p. 3082, 1995 I, p. 156; the Markengesetz) transposed Directive 89/104 into German law. 6 Paragraph 23 of the Markengesetz, entitled Use of names and descriptive indications; Trade in spare parts, provides: The proprietor of a trade mark or a commercial name shall not be entitled to prevent a third party from using, in the course of trade, ...
Legal background 3 According to the first recital in the preamble to Directive 89/104, the purpose of that directive is to abolish existing dis(*) The Office publishes these edited judgments for readers’ information. They are taken from the texts in the different languages which are usually made available by the Court on the day the judgment is delivered. This is therefore not an official publication of the Court of Justice. The only authentic texts are the judgments published in the European Court Reports.
2. a sign identical or similar to the trade mark or commercial name as an indication concerning characteristics or particularities of goods or services such as, in particular, their kind, quality, intended purpose, value, geographical origin or time of production or rendering,
... provided that that use is not contrary to honest practices. The dispute in the main proceedings and the questions referred for a preliminary ruling 7 Gerolsteiner Brunnen bottles mineral water and produces soft drinks with a
mineral water base and markets them in Germany. It is the proprietor of word mark No 1100746 Gerri, registered in Germany with priority dated 21 December 1985, and of German word/figurative marks Nos 2010618, 2059923, 2059924 and 2059925, which contain the word GERRI. Those trade marks cover mineral water, non-alcoholic beverages, fruit-juice based drinks and lemonades. 8 Since the mid-1990s Putsch has marketed soft drinks in Germany bearing labels including the words KERRY Spring. Those drinks are manufactured and bottled in Ballyferriter in County Kerry, Ireland, by the Irish company Kerry Spring Water using water from a spring called Kerry Spring. 9 Gerolsteiner Brunnen commenced proceedings against Putsch in the German courts for infringement of its trade mark rights. At first instance, the Landgericht München (Munich Regional Court) essentially found for Gerolsteiner Brunnen and restrained Putsch from using the distinctive sign KERRY Spring for mineral water or soft drinks. On appeal by Putsch, however, the Oberlandesgericht München (Munich Higher Regional Court) dismissed Gerolsteiner Brunnen’s claims. Gerolsteiner Brunnen then brought an appeal on a point of law (Revision) before the Bundesgerichtshof.
10 The Bundesgerichtshof considers that the conditions for the likelihood of aural confusion for the purposes of Article 5(1)(b) of Directive 89/104 are met in the main proceedings. In those circumstances, the outcome of the appeal on a point of law depends on the interpretation of Article 6(1)(b) of Directive 89/104 and, more particularly, on whether use as a trade mark excludes the applicability of that provision.
11 In those circumstances, by order of 7 February 2002, the Bundesgerichtshof decided to stay proceedings and to refer the following questions to the Court for a preliminary ruling: 1. Is Article 6(1)(b) of the First Trade Mark Directive also applicable if a third party uses the indications referred to therein as a trade mark (markenmässig)?
2. If so, must that use as a trade mark be taken into account when considering,
CONTENTS
pursuant to the final clause of Article 6(1) of the First Trade Mark Directive, whether use has been in accordance with honest practices in industrial or commercial matters?
The questions referred for a preliminary ruling 12 By the questions referred for a preliminary ruling, which will be taken together, the referring court asks the Court about the scope of Article 6(1) of Directive 89/104 in a situation such as that in the main proceedings. 13 The referring court notes that there are differing views on whether the use of a geographical indication to distinguish goods and identify their origin, which it describes as use as a trade mark (markenmässig), means that Article 6(1) of Directive 89/104 does not apply.
14 The Commission pointed out by reference to the drafting history of Directive 89/104 that Article 5 of the proposal for a first Council Directive to approximate the laws of the Member States relating to trade marks (OJ 1980 C 351, p. 1) (which became Article 6 of Directive 89/104) laid down the formula provided he does not use them as a trade mark. However, that formula was replaced in the amended proposal (COM (85) 793 final (OJ 1985 C 351, p. 4)) by the words provided he uses them in accordance with honest industrial or commercial practice. The Commission adds that it is apparent from the statement of reasons for the amended proposal that that substitution was made in the interests of greater clarity.
15 In those circumstances, an expression such as as a trade mark cannot be regarded as appropriate for determining the scope of Article 6 of Directive 89/104. 16 In order better to define its scope in circumstances such as those in the main proceedings it should be borne in mind that, by a limitation of the effects of the rights derived from Article 5 of Directive 89/104 by the proprietor of a trade mark, Article 6 of that directive seeks to reconcile the fundamental interests of trademark protection with those of free movement of goods and freedom to provide services in the common market in such a way that trade mark rights are able to ful-
fil their essential role in the system of undistorted competition which the Treaty seeks to establish and maintain (see, inter alia, Case C-63/97 BMW [1999] ECR I905, paragraph 62).
17 Article 5(1) of Directive 89/104 allows the proprietor of a trade mark to prevent all third parties from using, in the course of trade, any sign which is identical with the trade mark in relation to goods which are identical with those for which the trade mark is registered (Article 5(1)(a)) and any sign where, because of its identity with, or similarity to, the trade mark and the identity or similarity of the goods in question, there exists a likelihood of confusion on the part of the public (Article 5(1)(b)). 18 Article 6(1)(b) of Directive 89/104 provides that the proprietor of the trade mark may not prohibit a third party from using, in the course of trade, indications concerning, inter alia, the geographical origin of goods provided the third party uses them in accordance with honest practices in industrial or commercial matters. 19 It should be noted that that provision draws no distinction between the possible uses of the indications referred to in Article 6(1)(b) of Directive 89/104. For such an indication to fall within the scope of that article, it suffices that it is an indication concerning one of the characteristics set out therein, like geographical origin.
20 The main proceedings in the present case concern, first, the trade mark GERRI, which has no geographical connotation and, second, the sign KERRY Spring, which refers to the geographical origin of the water used in the manufacture of the product in question, the place where the product is bottled and the place where the producer is established. 21 The Commission emphasised the geographical nature of the expression KERRY Spring by noting that Kerry Spring is expressly included in the list of mineral waters recognised by Ireland for the purposes of Council Directive 80/777/EEC of 15 July 1980 on the approximation of the laws of the Member States relating to the exploitation and marketing of natural mineral waters (OJ 1980 L 229, p. 1) (see the list of natural mineral waters recog-
nised by the Member States published by the Commission in OJ 2002 C 41, p. 1).
22 The referring court finds that there exists a likelihood of aural confusion for the purposes of Article 5(1)(b) of Directive 89/104 between GERRI and KERRY since experience shows that, when ordering orally, customers shorten KERRY Spring to KERRY. 23 The question therefore arises whether such a likelihood of confusion between a word mark and an indication of geographical origin entitles the proprietor of the trade mark to rely upon Article 5(1)(b) of Directive 89/104 to prevent a third party from using the indication of geographical origin. 24 In answering that question, the only test mentioned in Article 6(1) of Directive 89/104 is whether the indication of geographical origin is used in accordance with honest practices in industrial or commercial matters. The condition of honest practice constitutes in substance the expression of a duty to act fairly in relation to the legitimate interests of the trade mark owner (BMW, cited above, paragraph 61). 25 The mere fact that there exists a likelihood of aural confusion between a word mark registered in one Member State and an indication of geographical origin from another Member State is therefore insufficient to conclude that the use of that indication in the course of trade is not in accordance with honest practices. In a Community of 15 Member States, with great linguistic diversity, the chance that there exists some phonetic similarity between a trade mark registered in one Member State and an indication of geographical origin from another Member State is already substantial and will be even greater after the impending enlargement.
26 It follows that, in a case such as that in the main proceedings, it is for the national court to carry out an overall assessment of all the relevant circumstances. Since the case concerns bottled drinks, the circumstances to be taken into account by that court would include in particular the shape and labelling of the bottle in order to assess, more particularly, whether the producer of the drink bearing the indication of geographical origin might be regarded as unfairly com-
CONTENTS
peting with the proprietor of the trade mark.
CASE-LAW OF THE COURT OF JUSTICE OF THE EUROPEAN COMMUNITIES (*)
27 The answer to the questions referred for a preliminary ruling must therefore be that Article 6(1)(b) of Directive 89/104 is to be interpreted as meaning that, where there exists a likelihood of aural confusion between a word mark registered in one Member State and an indication, in the course of trade, of the geographical origin of a product originating in another Member State, the proprietor of the trade mark may, pursuant to Article 5 of Directive 89/104, prevent the use of the indication of geographical origin only if that use is not in accordance with honest practices in industrial or commercial matters. It is for the national court to carry out an overall assessment of all the circumstances of the particular case in that regard.
JUDGMENT OF THE COURT OF JUSTICE
28
(…) Costs
Operative part: Article 6(1)(b) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks is to be interpreted as meaning that, where there exists a likelihood of aural confusion between a word mark registered in one Member State and an indication, in the course of trade, of the geographical origin of a product originating in another Member State, the proprietor of the trade mark may, pursuant to Article 5 of Directive 89/104, prevent the use of the indication of geographical origin only if that use is not in accordance with honest practices in industrial or commercial matters. It is for the national court to carry out an overall assessment of all the circumstances of the particular case in that regard.
of 29 April 2004 in Joined Cases C-468/01 P to C-472/01 P (five appeals against the judgments of the Court of First Instance of the European Communities (Second Chamber) of 19 September 2001 in Case T117/00 Procter & Gamble v OHIM (Square tablet, white and pale green) [2001] ECR II-2723, Case T-118/00 Procter & Gamble v OHIM (Square tablet, white with green speckles and pale green) [2001] ECR II-2731, Case T119/00 Procter & Gamble v OHIM (Square tablet, white with yellow and blue speckles) [2001] ECR II-2761, Case T-120/00 Procter & Gamble v OHIM (Square tablet, white with blue speckles) [2001] ECR II-2769, and Case T-121/00 Procter & Gamble v OHIM (Square tablet, white with green and blue speckles) [2001] ECR II-2777): Procter & Gamble Company and Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)
(Appeal - Community trade mark - Article 7(1)(b) of Regulation (EC) No 40/94 Three-dimensional tablets for washing machines or dishwashers - Absolute ground for refusal to register - Distinctive character) (Language of the case: English) 1 By applications lodged at the Court Registry on 6 December 2001, Procter & Gamble Company (‘Procter & Gamble’) appealed pursuant to Article 49 of the EC Statute of the Court of Justice against the judgments of the Court of First Instance of 19 September 2001 in Case T-117/00 Procter & Gamble v OHIM (Square (*) The Office publishes these edited judgments for readers’ information. They are taken from the texts in the different languages which are usually made available by the Court on the day the judgment is delivered. This is therefore not an official publication of the Court of Justice. The only authentic texts are the judgments published in the European Court Reports.
tablet, white and pale green) [2001] ECR II-2723 (‘Case T-117/00’), Case T-118/00 Procter & Gamble v OHIM (Square tablet, white with green speckles and pale green) [2001] ECR II-2731 (‘Case T118/00’), Case T-119/00 Procter & Gamble v OHIM (Square tablet, white with yellow and blue speckles) [2001] ECR II2761(‘Case T-119/00’), Case T-120/00 Procter & Gamble v OHIM (Square tablet, white with blue speckles) [2001] ECR II-2769 (‘Case T-120/00’), and Case T-121/00 Procter & Gamble v OHIM (Square tablet, white with green and blue speckles) [2001] ECR II-2777 (‘Case T121/00’) (hereinafter together referred to as ‘the judgments under appeal’), by which the Court of First Instance dismissed its actions for annulment of the decisions of the Third Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (‘OHIM’) of 29 February, 3 and 8 March 2000 (Cases R-509/1999-1, R-516/19991, R-519/1999-1, R-520/1999-1 and R529/1999-1), which had rejected its appeals against the refusal to register as Community trade marks three-dimensional tablets for washing machines or dishwashers (‘the contested decisions’).
2 By order of the President of the Court of Justice of 20 March 2003, Cases C468/01 P to C-472/01 P were joined for the purposes of the oral procedure and the judgment.
Legal background 3 Article 4 of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1) provides: ‘A Community trade mark may consist of any signs capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.’ 4
Article 7 of the regulation provides:
CONTENTS
‘1. The following shall not be registered: (a) signs which do not conform to the requirements of Article 4; (b) trade marks which are devoid of any distinctive character; (c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service; trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade;
tion: ‘washing and bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; preparations for the washing, cleaning and care of dishes; soaps’. 7 By decisions of 17 June 1999, the OHIM examiner refused the applications on the ground that the trade marks for which registration had been applied were devoid of distinctive character and for that reason could not be registered on account of Article 7(1)(b) of Regulation No 40/94.
8 By the contested decisions, the Third Board of Appeal of OHIM upheld the examiner’s decisions finding that each of the marks for which registration was sought was devoid of any distinctive character for the purposes of that provision.
... 3. Paragraph 1(b), (c) and (d) shall not apply if the trade mark has become distinctive in relation to the goods or services for which registration is requested in consequence of the use which has been made of it.’ Facts of the case 5 On 13 October 1998 Procter & Gamble applied to OHIM for registration as Community trade marks of the following three-dimensional shapes, which were presented as square tablets with slightly rounded edges and corners: — a square tablet consisting of two layers, one white and the other pale green (Case C-468/01 P); — a square tablet consisting of two layers, one white with green speckles and the other pale green (Case C-469/01 P); — a square white tablet with yellow and blue speckles (Case C-470/01 P);
— a square white tablet with blue speckles (Case C-471/01 P), and — a square white tablet with green and blue speckles (Case C-472/01 P).
6 The products in respect of which registration is sought are in class 3 of the Nice Agreement concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the descrip-
9 The Board of Appeal pointed out, first, that it is clear from Article 4 of Regulation No 40/94 that the shape of a product may be registered as a Community trade mark, provided that the shape displays certain features that are sufficiently unusual and arbitrary to enable the relevant consumers to recognise the product, purely on the basis of its appearance, as emanating from a specific undertaking. Given the advantages offered by products put up in tablet form for washing laundry and dishes, the Board of Appeal went on to point out that Procter & Gamble’s competitors must also remain free to make such products using the simplest geometrical shapes. The basic geometric shapes (square, round, triangular or rectangular) were the most obvious shapes for such tablets and there was nothing arbitrary or fanciful about selecting a square tablet for the manufacture of solid detergents. Finally, the Board of Appeal held that the colours of the trade marks concerned did not confer distinctive character on them.
tinctive character within the meaning of Article 7(1)(b) of Regulation No 40/94, and did so on the following grounds. ‘52 It is clear from Article 4 of Regulation No 40/94 that both a product’s shape and its colours fall among the signs which may constitute a Community trade mark. However, the fact that a category of signs is, in general, capable of constituting a trade mark does not mean that signs belonging to that category necessarily have distinctive character for the purposes of Article 7(1)(b) of Regulation No 40/94 in relation to a specific product or service.
53. According to Article 7(1)(b) of Regulation No 40/94, “trade marks which are devoid of any distinctive character” are not to be registered. A mark which enables the goods or services in respect of which registration of the mark has been sought to be distinguished as to their origin is to be considered as having distinctive character. It is not necessary for that purpose for the mark to convey exact information about the identity of the manufacturer of the product or the supplier of the services. It is sufficient that the mark enables members of the public concerned to distinguish the product or service that it designates from those which have a different trade origin and to conclude that all the products or services that it designates have been manufactured, marketed or supplied under the control of the owner of the mark and that the owner is responsible for their quality (see, to that effect, Case C-39/97 Canon [1998] ECR I-5507, paragraph 28).
10 By applications lodged at the Registry of the Court of First Instance on 3 May 2000, Procter & Gamble brought five actions for annulment of the contested decisions.
54. It is clear from the wording of Article 7(1)(b) of Regulation No 40/94 that a minimum degree of distinctive character is sufficient to render the ground for refusal set out in that article inapplicable. It is therefore appropriate to ascertain - in an a priori examination not involving any consideration of the use made of the sign within the meaning of Article 7(3) of Regulation No 40/94 - whether the mark applied for will enable the members of the public targeted to distinguish the products concerned from those having a different trade origin when they come to select a product for purchase.
11 In Case T-118/00, the Court of First Instance held that the OHIM Board of Appeal had rightly concluded that the threedimensional trade mark for which registration is sought was devoid of any dis-
55. Article 7(1)(b) of Regulation No 40/94 does not distinguish between different categories of trade marks. The criteria for assessing the distinctive character of three-dimensional trade marks con-
Procedure before the Court of First Instance and the judgments under appeal
CONTENTS
sisting of the shape of the product itself are therefore no different from those applicable to other categories of trade marks. 56. Nevertheless, when those criteria are applied, account must be taken of the fact that the perception of the relevant section of the public is not necessarily the same in relation to a three-dimensional mark consisting of the shape and the colours of the product itself as it is in relation to a word mark, a figurative mark or a threedimensional mark not consisting of the shape of the product. Whilst the public is used to recognising the latter marks instantly as signs identifying the product, this is not necessarily so where the sign is indistinguishable from the appearance of the product itself.
57. It is appropriate to point out that the products in respect of which the trade mark was sought in the present case are widely used consumer goods. The public concerned, in the case of these products, is all consumers. Therefore, in any assessment of the distinctive character of the mark for which registration is sought, account must be taken of the presumed expectations of an average consumer who is reasonably well-informed and reasonably observant and circumspect (see, by analogy, Case C-210/96 Gut Springenheide and Tusky [1998] ECR I-4657, paragraphs 30 to 32). 58. The way in which the public concerned perceives a trade mark is influenced by the average consumer’s level of attention, which is likely to vary according to the category of goods or services in question (see Case C-342/97 Lloyd Schuhfabrik Meyer [1999] ECR I-3819, paragraph 26). The level of attention given by the average consumer to the shape and colours of washing machine and dishwasher tablets, being everyday consumer goods, is not high.
60. The three-dimensional shape for which registration has been sought, namely a square tablet, is one of the basic geometrical shapes and is an obvious one for a product intended for use in washing machines or dishwashers. The slightly rounded corners of the tablet are dictated by practical considerations and are not likely to be perceived by the average consumer as a distinctive feature of the shape claimed, capable of distinguishing it from other washing machine or dishwasher tablets. 61. As to the tablet’s two layers, one of which is white with green speckles and the other green, the public concerned is used to seeing different colour features in detergent preparations. ... The coloured particles thus suggest certain qualities, although that does not mean that they can be regarded as a descriptive indication in terms of Article 7(1)(c) of Regulation No 40/94. However, it does not follow from the fact that that ground for refusal is inapplicable that the coloured elements necessarily confer a distinctive character on the mark applied for. Where, as in the present case, the target sector of the public sees the presence of coloured elements as a suggestion that the product has certain qualities, and not as an indication of its origin, there is no distinctive character. The fact that consumers may nevertheless get into the habit of recognising the product from its colours is not enough, on its own, to preclude the ground for refusal based on Article 7(1)(b) of Regulation No 40/94. Such a development in the public’s perception of the sign, if proved, may be taken into account only for the purposes of Article 7(3) of Regulation No 40/94.
...
59. In order to ascertain whether the combination of the shape of the tablet at issue and the arrangement of its colours may be perceived by members of the public as an indication of origin, the overall impression produced by that combination must be analysed (see, by analogy, Case C-251/95 SABEL [1997] ECR I-6191, paragraph 23). That is not incompatible with an examination of each of the product’s individual features in turn.
63. Second, the Board of Appeal’s finding that the presence of a coloured layer and speckles is not sufficient for the tablet’s appearance to be perceived as indicative of the product’s origin is justified. Where various ingredients are to be combined in a washing machine or dishwashing product in tablet form, adding speckles or layers is one of the most obvious solutions.
basic colours, such as blue or green, is commonplace and is even typical of detergents. The use of other basic colours, such as red or yellow, is one of the most obvious variations on the typical design of these products. The same is true of the various shades of those colours. For that reason, the applicant’s argument that the mark applied for is distinctive because one of the layers of the tablet is “pale green” must be dismissed
65. It follows that the three-dimensional mark applied for consists of a combination of obvious features typical of the product concerned.
66. It should be added that it is possible to obtain different combinations of those features by varying the basic geometric shapes and by adding to the product’s basic colour another basic colour either as a layer in the tablet or as speckles. The ensuing differences in the appearance of the various tablets are not sufficient to enable each of those tablets to function as an indication of the product’s origin, inasmuch as those differences are, as in the present case, obvious variations on the product’s basic shapes.
67. Given the overall impression created by the shape of the tablet in question and the arrangement of its colours, the mark applied for does not enable consumers to distinguish the products concerned from those having a different trade origin when they come to select a product for purchase. 68. It should be added that the inability of the mark applied for to indicate, a priori and irrespective of the use made of it within the meaning of Article 7(3) of Regulation No 40/94, the product’s origin is not affected by how many similar tablets are already on the market. Consequently, it is not necessary to decide here whether the distinctive character of the mark should be assessed by reference to the date on which the application for registration is filed or the date of actual registration. ...
64. As regards the use of the colour green, it must be observed that the use of
73. As regards the applicant’s arguments concerning the Board of Appeal’s consideration of the need to keep the shape and colours of the tablet at issue available, it
CONTENTS
must be observed that the absolute grounds for refusal set out in Article 7(1)(b) to (e) of Regulation No 40/94 address the concern of the Community legislature to prevent the grant to one operator alone of exclusive rights which could hinder competition on the market for the goods or services concerned (see, as regards the ground of refusal relating to the descriptive nature of the sign, the judgment of the Court of Justice in Joined Cases C-108/97 and C-109/97 Windsurfing Chiemsee [1999] ECR I-2779, paragraph 25). However, the interest that competitors of an applicant for a three-dimensional mark consisting of the product’s design may have in being able freely to choose shapes and colours for their own products is not in itself a ground for refusing registration of such a mark, nor a criterion sufficient in itself for the assessment of the mark’s distinctive character. Article 7(1)(b) of Regulation No 40/94, in excluding the registration of signs devoid of any distinctive character, protects any interest there may be in keeping available various alternatives for a product’s design only to the extent to which the design of the product in respect of which registration is sought is not capable, a priori and irrespective of the use made of it within the meaning of Article 7(3) of Regulation No 40/94, of functioning as a trade mark, that is to say, of enabling the public concerned to distinguish the product concerned from those having a different trade origin.
judgments under appeal. Paragraphs 51 to 73 of the judgment in Case T-117/00 are couched in essentially the same terms as paragraphs 52 to 74 of the judgment in Case T-118/00, which are set out in the preceding paragraph. Likewise, paragraphs 51 to 71 of the judgments in Cases T-119/00 to T-121/00 are couched in essentially the same terms as paragraphs 52 to 61 and 64 to 74 of the judgment in Case T-118/00. 13 Therefore, by the judgments under appeal the Court of First Instance dismissed the actions brought by Procter & Gamble against the contested decisions.
The appeals 14 In its appeals Procter & Gamble claims that the judgments under appeal should be set aside and that OHIM should be ordered to pay the costs. 15 OHIM contends that the appeals should be dismissed and that Procter & Gamble should be ordered to pay the costs. 16 In support of its appeals, Procter & Gamble maintains that the Court of First Instance made an error of law in its interpretation of Article 7(1)(b) of Regulation No 40/94. That single plea in law is subdivided, in essence, into five parts relating to: — the distinctive character of the trade marks for which registration is sought; — the need to consider the trade mark as a whole;
74. Although the Board of Appeal gave considerable weight, in the contested decision, to considerations relating to the interest in preventing trade mark law from giving rise to a monopoly on a product, it does not, however, follow that in this case the Board failed to have due regard to the criteria applicable in assessing the distinctiveness of the mark applied for. In paragraph 11 of the contested decision, the Board of Appeal states that a product’s shape may be registered as a Community trade mark “provided that the shape displays certain features that are sufficiently unusual and arbitrary to enable the relevant consumers to recognise the product, purely on the basis of its appearance, as emanating from a specific undertaking”. Thus it applied in substance a criterion consonant with the principles set out above.’ 12 The Court of First Instance reached the same conclusion in the other four
product is an obvious one is not relevant. Nor is it relevant whether the slightly rounded corners of the tablets in question are likely to be perceived by the average consumer as a distinctive feature of the shape for which registration as a trade mark is sought, capable of distinguishing them from other washing machine or dishwasher tablets. The right question is whether the shape of the tablets, their slightly rounded corners, the colours used and the pattern (speckles or layers) were at the material time already part of the usual get-up of tablets on the market and, if they were not, whether the difference was perceptible, rendering it apt to confer distinctive character on the marks.
— the assessment of the consumer’s level of attention; — the date by reference to which distinctive character of the marks concerned should be assessed; and — the criterion concerning use of a trade mark. 17 OHIM contends that in the judgments under appeal the Court of First Instance did not make an error of law in its interpretation and application of Article 7(1)(b) of Regulation No 40/94. The first part of the plea: the distinctive character of a trade mark
Arguments of the parties 18 By the first part of its plea, Procter & Gamble submits that the question whether the geometrical shape of the
19 As regards, more specifically, the coloured features of the tablets concerned, Procter & Gamble claims that even if the colours, taken individually, do not give an indication of the tablets’ origin, they are part of the overall get-up and contribute to the distinctive character of the marks. Furthermore, contrary to the finding of the Court of First Instance, combinations of basic colours and the various shades thereof can constitute a valid trade mark for a whole category of products (such as detergents). 20 The Court of First Instance held that the inability of the trade marks for which registration is sought to indicate the product’s origin was not affected by how many similar tablets were already on the market. Procter & Gamble submits, however, that if there were no similar tablets on the market at the material time, the get-ups of the tablets concerned were perceptibly different and were therefore distinctive.
21 OHIM contends that the Court of First Instance correctly applied the criteria in Article 7(1)(b) of Regulation No 40/94 for assessing whether a trade mark is distinctive, both as regards the relevant public and as regards the products in question, since distinctive character must be assessed by reference to the specific nature of the product. The Court of First Instance also examined each mark as a whole, with due regard to each of its components, its function and the way in which it would be perceived by the relevant consumers. Furthermore, OHIM submits that the Court of First Instance rightly refused to take into account whether Procter & Gamble, or its competitors, actually used the same or similar washing machine or dishwasher
CONTENTS
tablets at the date on which the trademark applications were filed.
22 As regards distinctive character, OHIM maintains that a trade mark has distinctive character if it allows the products or services claimed to be distinguished as to their trade origin and not as to their properties or characteristics. That interpretation of distinctiveness, which was adopted by the Court of First Instance, is the only interpretation which is compatible both with the wording of Article 7(1)(b) of Regulation No 40/94 and with the meaning and function of a trade mark. 23 For OHIM, the Court of First Instance’s finding that the perception of the relevant public is not necessarily the same in relation to a three-dimensional trade mark consisting of the shape of the product itself as it is in relation to a word mark is of particular importance in this instance. Whilst the public is used to recognising word marks instantly as signs identifying the product, the same is not necessarily true where the sign is indistinguishable from the appearance of the product itself.
24 The mere shape of the product, in the absence of other elements which typically are used as signs - such as engraved words - will not, as a general rule, be perceived by the average consumer from the outset as being a trade mark, unless the shape has some striking feature. It is therefore necessary to define what the striking feature is which confers distinctiveness on the shape of a product, and to do so by reference to the functions performed by trade marks. A positive definition could be that the shape must be sufficiently fanciful, arbitrary or unusual. A negative definition would be that commonplace, obvious or unremarkable shapes and/or combinations of shapes and colours are devoid of any distinctive character. 25 In this instance, the overall impression given by the tablets at issue is, in each of the cases culminating in the judgments under appeal, of a non-distinctive sign. None of these tablets possesses distinctive features which would allow an average consumer to associate it with a particular manufacturer, unless there were massive advertising and/or use, in other words unless Article 7(3) of Regulation No 40/94 applied.
26 The test proposed by Procter & Gamble - by virtue of which it is necessary, first, to ascertain what is the usual get-up of the relevant product on the market and, second, to determine whether, from the consumer’s point of view, the shape of the trade mark for which registration is sought is perceptibly different means in effect that a three-dimensional mark should be registered if it meets just one condition, namely that it is different from any other shape, which is contrary to Article 7(1)(b) of Regulation No 40/94. 27 That test in fact amounts to imposing, for the registration of trade marks, the same conditions as those which must be met if a design is to be registered. Although OHIM acknowledges that one and the same item may be protected under different systems of industrial property law, it is of the utmost importance to apply the definitions and conditions corresponding to the protection pertaining to each of those systems separately.
Findings of the Court 28 Under Article 4 of Regulation No 40/94 a Community trade mark may consist of any signs capable of being represented graphically, provided that such signs are capable of distinguishing the products or services of one undertaking from those of other undertakings. 29 It is clear from Article 4 that both a product’s shape and its colours fall among the signs which may constitute a Community trade mark. Therefore, a sign consisting of the three-dimensional shape of a tablet for washing machines or dishwashers, in combination with the arrangement of the tablet’s colours, may, in principle, constitute a trade mark, provided that the two conditions mentioned in the preceding paragraph are met. 30 However, as the Court of First Instance rightly pointed out in paragraph 52 of the judgment in Case T-118/00 and in the corresponding paragraphs of the judgments in Cases T-117/00 and T-119/00 to T-121/00, the fact that a sign is, in general, capable of constituting a trade mark within the meaning of Article 4 of Regulation No 40/94 does not mean that the sign necessarily has distinctive character for the purposes of Article 7(1)(b) of the regulation in relation to a specific product or service. 31 Under the last-mentioned provision, trade marks which are devoid of any distinctive character are not to be registered.
32 For a trade mark to possess distinctive character for the purposes of Article 7(1)(b) of Regulation No 40/94, it must serve 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 (see, in relation to Article 3(1)(b) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1), a provision which is identical to Article 7(1)(b), Joined Cases C-53/01 to C55/01 Linde and Others [2003] ECR I3161, paragraph 40).
33 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 them by the relevant public, which consists of average consumers of the products or services in question, who are reasonably well informed and reasonably observant and circumspect (see, inter alia, Linde, paragraph 41, and Case C-363/99 Koninklijke KPN Nederland [2004] ECR I-0000, paragraph 34).
34 It is apparent from the grounds of the judgments under appeal that the Court of First Instance did not make an error of law in its interpretation of Article 7(1)(b) of Regulation No 40/94. 35 The Court of First Instance, in accordance with the settled case-law of the Court of Justice, assessed whether the trade marks at issue were devoid of any distinctive character by reference, first, to the products or services in respect of which their registration was sought, and, second, by reference to the perception of the relevant public, which consists, in this case, of all consumers. 36 The Court of First Instance was also correct in stating that the criteria for assessing the distinctive character of threedimensional shape-of-products marks are no different from those applicable to other categories of trade mark. It none the less observed that, for the purpose of applying those criteria, the relevant public’s perception is not necessarily the same in relation to a three-dimensional mark consisting of the shape and colours of the product itself as it is in relation to a word or figurative mark consisting of a sign
CONTENTS
which is independent from the appearance of the products it denotes. Average consumers are not in the habit of making assumptions about 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 could therefore prove more difficult to establish distinctiveness in relation to such a threedimensional mark than in relation to a word or figurative mark (see, to that effect, Linde, paragraph 48, and Case C218/01 Henkel [2004] ECR I-0000, paragraph 52).
40 In this instance, there is nothing in the findings made by the Court of First Instance to suggest that the evidence produced to it was distorted. 41 In view of the foregoing, the first part of the plea, which relates to the distinctive character of a trade mark, must be rejected as unfounded. The second part of the plea: the need to consider the trade mark as a whole
Arguments of the parties
37 In those circumstances, the more closely the shape for which registration is sought resembles the shape most likely to be taken by the product in question, the greater the likelihood of the shape being devoid of any distinctive character for the purposes of Article 7(1)(b) of Regulation No 40/94. Only a trade 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 that provision (see, in relation to the identical provision in Article 3(1)(b) of First Directive 89/104, Henkel, paragraph 49).
38 It follows that, in holding that the trade marks for which registration is sought were devoid of any distinctive character for the purposes of Article 7(1)(b) of Regulation No 40/94, the Court of First Instance did not make an error of law in relation to either that provision or the relevant case-law of the Court of Justice. 39 The actual application by the Court of First Instance of those criteria to these cases involves findings of a factual nature. 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 produced to it has been distorted, constitute a point of law which is subject, as such, to review by the Court of Justice on appeal (see Case C-104/00 P DKV v OHIM [2002] ECR I-7561, paragraph 22).
42 By the second part of its plea, Procter & Gamble submits that, in assessing whether the combination of the shapes of the tablets concerned and the arrangement of their colours may be perceived by the relevant public as an indication of the tablets’ origin, the Court of First Instance did not actually analyse the overall impression produced by that combination, as the case-law requires it to do. It comprehensively examined each of the individual components of which of the tablets are composed and based its subsequent conclusions on that examination but it did not really analyse the overall impression produced by the specific combinations concerned. 43 OHIM challenges this part of the plea, maintaining that the Court of First Instance correctly considered the trade marks in question as a whole, although it confirmed, also quite correctly, that that approach does not preclude starting with a separate analysis of each of the individual components of the marks. OHIM, which itself carries out an analysis of that kind, contends that the overall impression given by each of the trade marks concerned is of a sign which is not distinctive. Findings of the Court 44 As the Court has consistently held, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see SABEL, paragraph 23, and Lloyd Schuhfabrik Meyer, paragraph 25). Thus, in order to assess whether or not a trade mark has any distinctive character, the overall impression given by it must be considered (see SABEL, paragraph 23, and, in relation to a word mark, DKV v OHIM, paragraph 24).
45 That does not mean, however, that the competent authority, responsible for ascertaining whether the trade mark for
which registration is sought - in this instance the graphic representation of a combination of the shape of a washing machine or dishwasher tablet and the arrangement of its colours - is capable of being perceived by the public as an indication of origin, may not first examine each of the individual features of the getup of that mark in turn. It may be useful, in the course of the competent authority’s overall assessment, to examine each of the components of which the trade mark concerned is composed 46 In this instance, the Court of First Instance, having examined each of those components separately, then assessed - as is clear from paragraphs 59 to 67 of the judgment in Case T-118/00 and the corresponding paragraphs of the judgments in Cases T-117/00 and T-119/00 to T-121/00 - the overall impression deriving from the shape of the tablets concerned and the arrangement of their colours, as is required by the case-law referred to in paragraph 44 of this judgment. 47 It follows that there is nothing in the judgments under appeal to suggest that the Court of First Instance failed to base its assessment of the distinctive character of the trade marks for which registration is sought on the overall impression which they produce. 48 Therefore, the second part of the plea, which relates to the need to consider the trade mark as a whole, must be rejected. The third part of the plea: the assessment of the average consumer’s level of attention
Arguments of the parties 49 By the third part of its plea, Procter & Gamble recalls that, at the date on which the relevant trade-mark applications were filed, dishwasher tablets and, more particularly, washing machine tablets were not everyday consumer products and that at that time they were at the top end of the relevant market. In those circumstances, Procter & Gamble maintains that, contrary to the Court of First Instance’s finding, the level of attention paid by the average consumer of those products to their get-up was high.
50 In any event, Procter & Gamble adds that it does not understand why the consumer’s level of attention should not be ‘high’ in relation to everyday consumer products. The everyday use of such prod-
CONTENTS
ucts continually draws the consumer’s attention to their get-up and hence is conducive to their receiving a high level of attention.
The fourth part of the plea: the date by reference to which the distinctive character of a trade mark must be assessed
two dates the assessment of the distinctive character of the trade marks in question should be carried out.
51 OHIM contends that in the judgments under appeal the Court of First Instance defined the relevant public as consisting of average consumers, who are reasonably well informed and reasonably observant and circumspect, and described the products in question as everyday consumer products. In that regard, OHIM submits that what is important is that washing machine or dishwasher tablets are intended to be used every day by any consumer whatsoever. The fact that the tablets concerned are more expensive than washing or dishwashing products in powder form and that they are products new to the market does not mean that they are products at the top end of the market, to which consumers pay great attention.
Arguments of the parties
60 The fourth part of the plea, which relates to the date by reference to which the distinctive character of a trade mark should be assessed, must therefore also be rejected as unfounded.
52 Furthermore, OHIM submits that it is important to be aware of how the tablets concerned are sold, how they differ from other forms of washing or dishwashing products, what their advantages are as against those other products, and how they are actually used in the washing process. At no point in the product’s application will the consumer feel the need or the urge to ask himself further questions about the shape or external appearance of the tablets.
Findings of the Court 53 On this point, the Court of First Instance’s finding in paragraph 58 of the judgment in Case T-118/00 and the corresponding paragraphs of the judgments in Cases T-117/00 and T-119/00 to T-121/00, that, since washing machine and dishwasher tablets are everyday consumer products, the level of attention paid by the average consumer to their shape and colours is not high is a finding of fact, which, as has been recalled in paragraph 39 of this judgment, is not subject to review by the Court of Justice on appeal where, as in this instance, it does not entail a distortion of the factual evidence produced to the Court of First Instance.
54 In those circumstances, the third part of the plea, which relates to the assessment of the average consumer’s level of attention, must also be rejected.
55 By the fourth part of its plea, Procter & Gamble claims that the Court of First Instance was wrong not to adjudicate on the question concerning the date by reference to which it is appropriate to assess the distinctive character of the trade marks for which registration is sought. In its submission, it is appropriate in this instance to ascertain what were the usual get-ups of washing machine and dishwasher tablets on the market at the date on which the various applications were filed and to determine whether, from the consumer’s point of view, the get-up of the trade marks for which registration is applied is perceptibly different. 56 OHIM argues that in the judgments under appeal the Court of First Instance did not find it necessary to adjudicate on this point because, even at the date on which the applications for registration were filed, the trade marks in question lacked distinctiveness. In any event, the conditions for registration of a Community trade mark must, in its submission, be met both at the date of filing and again at the date of registration. Findings of the Court 57 As is clear from paragraph 32 of this judgment, a trade mark has distinctive character for the purposes of Article 7(1)(b) of Regulation No 40/94 if it serves to distinguish the products or services in respect of which registration is applied from those of other undertakings. 58 In this case, the Court of First Instance was correct in finding, in paragraph 68 of the judgment in Case T118/00 and in the corresponding paragraphs of the judgments in Cases T-117/00 and T-119/00 to T-121/00, that it was not necessary to decide which was the relevant date for the assessment of whether the trade marks had distinctive character for the purposes of that provision, since it had found that the marks for which registration was sought were not capable of identifying the origin of the products concerned and that that finding was not affected by how many similar tablets were already on the market. 59 In those circumstances, the Court of First Instance did not make an error of law in finding that there was no need for it to decide by reference to which of the
The fifth part of the plea: the criterion concerning use of a trade mark
Arguments of the parties 61 By the fifth part of its plea, Procter & Gamble submits that the public’s habit of perceiving colours as indicative of a product’s origin, a habit which may be created by the use of, or advertising for, other signs, is within the ambit of Article 7(1)(b) of Regulation 40/94 and not of Article 7(3) of the regulation.
62 OHIM contends that the question whether a trade mark has acquired distinctiveness through use arises solely under Article 7(3) of Regulation No 40/94.
Findings of the Court 63 It is sufficient to state in this connection that such an argument is ineffective, since, as is apparent from paragraphs 31 to 38 of this judgment, the Court of First Instance correctly applied Article 7(1)(b) of Regulation No 40/94 and stated, without making any error of law, that the trade marks for which registration is sought were devoid of any distinctive character. 64 It follows from all of the foregoing that the appeals are unfounded and must therefore be dismissed. 65
(…) Costs
Operative part: 1)
Dismisses the appeals;
2) Orders Procter & Gamble Company to pay the costs.
CONTENTS
CASE-LAW OF THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (*) JUDGMENT OF THE COURT OF FIRST INSTANCE (Second Chamber) of 22 June 2004 in Case T-185/02 (against the decision of the Third Board of Appeal of OHIM of 18 March 2002 (Case R 0247/20013)): Claude Ruiz-Picasso, Paloma RuizPicasso, Maya Widmaier-Picasso, Marina Ruiz-Picasso and Bernard Ruiz-Picasso v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) (Community trade mark – Regulation (EC) No 40/94 – Opposition – Likelihood of confusion – Application for Community word trade mark PICARO – Earlier word trade mark PICASSO)
4 On 25 May 1999 the application for the trade mark was published in the Community Trade Marks Bulletin.
name ‘Picasso estate’ (‘succession Picasso’), brought the present action.
5 On 19 August 1999 the Picasso estate, an estate in co-ownership under Article 815 et seq. of the French Civil Code, the co-owners being the applicants, raised an opposition under Article 42(1) of Regulation No 40/94 against registration of the mark applied for, for all classes of goods referred to in the application. The ground of the opposition was the likelihood of confusion referred to in Article 8(1)(b) of Regulation No 40/94. The opposition was based on the existence of Community trade mark No 614 867 owned by the Picasso estate (‘the earlier mark’). The earlier mark, namely the word mark PICASSO, was filed on 1 August 1997 and registered on 26 April 1999 for goods within Class 12 of the Nice Agreement, described as follows: ‘Vehicles; apparatus for locomotion by land, air or water, motor cars, motor coaches, trucks, vans, caravans, trailers’.
10 Since the intervener objected, within the period laid down for that purpose by the Court Registry, to English becoming the language of the case, German, as the language in which the application for the Community trade mark had been drafted, was adopted as language of the case in accordance with the second subparagraph of Article 131(2) of the Rules of Procedure of the Court.
(Language of the case: German)
11 Upon hearing the report of the JudgeRapporteur, the Court (Second Chamber) decided to open the oral procedure and, as measures of organisation of procedure provided for in Article 64 of the Rules of Procedure, put questions to the applicants and OHIM, which were answered within the period laid down for that purpose. 12 The parties presented argument and answered the Court’s questions at the hearing on 11 November 2003.
Background to the dispute 1 On 11 September 1998 the intervener filed an application, in German, with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) for a Community trade mark, pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended. 2 The mark for which registration was sought is the word sign PICARO. 3 The goods and services in respect of which the mark was sought to be registered fall within Class 12 of the Nice Agreement on the international classification of goods and services for the purposes of the registration of marks of 15 June 1957, as revised and amended, corresponding to the following description: ‘Vehicles and parts therefor; omnibuses’.
(*) The Office publishes these edited judgments for readers’ information. They are taken from the texts in the different languages which are usually made available by the Court on the day the judgment is delivered. This is therefore not an official publication of the Court of Justice. The only authentic texts are the judgments published in the European Court Reports.
6 By decision of 11 January 2001, the Opposition Division rejected the opposition on the ground that there was no likelihood of confusion between the marks at issue. 7 On 7 March 2001 the Picasso estate appealed to OHIM pursuant to Article 59 of Regulation No 40/94, seeking for the decision of the Opposition Division to be set aside and the application for the trade mark to be rejected. 8 By decision of 18 March 2002, notified to the applicants on 17 April 2002 (Case R 247/2001-3, ‘the contested decision’), the Third Board of Appeal of OHIM dismissed the appeal. It considered essentially that, in view of the high degree of attention of the relevant public, the marks at issue were not phonetically or visually similar. It further considered that the conceptual impact of the earlier mark was such as to counteract any phonetic and/or visual similarity between the marks at issue.
13 The applicants claim that the Court should: — set aside the contested decision; — allow the opposition and reject the application for the trade mark; — order the intervener to pay the costs. 14 OHIM contends that the Court should: — dismiss the application; — order the applicants to pay the costs. 15 The intervener contends that the Court should: — dismiss the application; — order the applicants to pay the costs.
Admissibility of the action Arguments of the parties
Procedure and forms of order sought by the parties 9 By an application in English lodged with the Registry of the Court on 13 June 2002, the applicants, acting under the
16 The intervener submits that the action is inadmissible, since the Picasso estate is neither a natural nor a legal person. The application does not indicate what type of legal person that entity belongs to, and it did not annex to the application any proof of its legal existence, contrary to the
CONTENTS
requirements of Article 44(5) of the Rules of Procedure.
17 In reply to the Court’s written questions the applicants stated that, although a co-ownership within the meaning of Article 815 et seq. of the French Civil Code does not have legal personality, it is a separate entity from its members which can be a creditor or debtor and has the right to bring legal proceedings. In the alternative, the applicants said that it should be considered that the action was brought on behalf of the five co-owners. Moreover, statements were produced which conferred power on Mr Claude Ruiz-Picasso to perform, on behalf of the other four heirs, all acts intended to preserve their rights as regards the work and name of Pablo Picasso.
18 OHIM stated that the Picasso estate was registered in the register of Community trade marks as the owner of the earlier mark, and that it therefore had capacity to be a party to the opposition proceedings by virtue of Article 8(2)(a)(ii) in conjunction with Article 42(1)(a) of Regulation No 40/94.
20 In those circumstances, the fact that the Picasso estate was registered as the owner of the earlier mark and on that basis took part in the opposition proceedings and the proceedings before the Board of Appeal is not enough for it to be considered that the action brought in its name complies with the requirements of Article 44 of the Rules of Procedure. 21 Contrary to the submissions of the intervener, that does not mean that the action is inadmissible. The expression ‘the Picasso estate’ designates collectively the five co-owners who, as natural persons, are not subject to the requirements in Article 44(5) of the Rules of Procedure. It must therefore be considered that the action was brought by the five co-owners.
22 The fact that the co-owners chose to bring these proceedings under the collective name ‘the Picasso estate’ does not affect their admissibility. The identity of the persons who are acting under that collective description is not in doubt. Furthermore, in the circumstances of the present case, no legitimate interest of the other parties to the dispute prevents the Court from rectifying, of its own motion, the name of the applicant for the purposes of the present judgment.
any elements put forward by the parties to the opposition proceedings. According to the applicants, the Board of Appeal was not entitled to base its decision on assumptions and suppositions not relied on by the parties.
25 OHIM replies that the Board of Appeal did not infringe Article 74(1) in fine of Regulation No 40/94 by basing its decision on facts which it introduced itself into the proceedings. On the contrary, according to OHIM, the Board of Appeal properly carried out a legal assessment of well-known facts on which the Opposition Division had already based its decision.
26 The intervener submits that OHIM is entitled to base its decisions on wellknown facts even if they have not been relied on by a party to the proceedings. In its view, the fact that cars are goods sold at high prices and the fact that, when buying a car, an especially large number of factors influence the consumer’s decision are well known.
Findings of the Court Findings of the Court
19 To show that the Picasso estate has capacity to bring proceedings as an entity independent of its members, the applicants referred solely to the provisions of Article 815 et seq. of the French Civil Code. On being invited by the Court to supplement their statements on this point and to provide proof, in accordance with Article 44(5) of the Rules of Procedure, of the legal existence of that entity, they confined themselves to referring once again to Article 815 et seq. of the French Civil Code. Instead of producing additional elements which could demonstrate, to satisfy the requirements of Article 44(5) of the Rules of Procedure, the autonomy and liability, even limited, of the Picasso estate and could prove that the authority granted to their lawyer had been properly conferred by a representative of that entity, authorised for the purpose, the co-owners provided, in the alternative, their addresses, the powers four of them had conferred on Claude Ruiz-Picasso, and the authority issued by him.
Substance 23 The applicants put forward two pleas in law in support of their application, alleging, first, breach of Article 8(1)(b) of Regulation No 40/94 and, second, failure to comply with the procedural principles laid down in Article 74(1) in fine of Regulation No 40/94, in that the Board of Appeal went beyond the bounds of the dispute between the parties to the opposition proceedings. The second plea should be examined first. Second plea in law: breach of procedural principles, in that the Board of Appeal went beyond the bounds of the dispute between the parties to the opposition proceedings
Arguments of the parties 24 The applicants submit that the assumption as to the high degree of attention of the relevant public in paragraph 15 of the contested decision and the suppositions as to the impact of the earlier mark on the market and the perception of that mark by the relevant public in paragraphs 19 to 21 of that decision are not based on
27 According to Article 74 of Regulation No 40/94, ‘in proceedings relating to relative grounds for refusal of registration, [OHIM] shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought’. 28 That provision restricts the examination carried out by OHIM in two ways. It relates, first, to the factual basis of decisions of OHIM, that is, the facts and evidence on which those decisions may be validly based (see, to that effect, Case T232/00 Chef Revival USA v OHIM – Massagué Marín (Chef) [2002] ECR II-2749, paragraph 45), and, second, to the legal basis of those decisions, that is, the provisions which the jurisdiction hearing the case is obliged to apply. Thus the Board of Appeal, when hearing an appeal against a decision terminating opposition proceedings, may base its decision only on the relative grounds for refusal which the party concerned has relied on and the related facts and evidence it has presented (Case T-308/01 Henkel v OHIM – LHS (UK) (KLEENCARE) [2003] ECR II0000, paragraph 32).
CONTENTS
of the dispute between the parties by taking account of the various matters referred to in this plea.
29 However, the restriction of the factual basis of the examination by the Board of Appeal does not preclude it from taking into consideration, in addition to the facts expressly put forward by the parties to the opposition proceedings, facts which are well known, that is, which are likely to be known by anyone or which may be learnt from generally accessible sources. 30 It must be borne in mind, at the outset, that the legal rule stated in Article 74(1) in fine of Regulation No 40/94 constitutes an exception to the principle of examination of the facts by OHIM of its own motion, laid down in limine by that provision. That exception must therefore be given a strict interpretation, defining its extent so as not to exceed what is necessary for achieving its object.
31 The object of the rule of law stated in Article 74(1) in fine of Regulation No 40/94 is to relieve OHIM of the task of investigating the facts itself in the context of proceedings between parties. That object is not compromised if OHIM takes well-known facts into account.
32 On the other hand, Article 74(1) in fine of Regulation No 40/94 cannot have the purpose of compelling the opposition division or Board of Appeal consciously to adopt a decision on the basis of factual hypotheses which are manifestly incomplete or contrary to reality. Nor is it intended to require the parties to opposition proceedings to put forward before OHIM every well-known fact which might possibly be relevant to the decision to be adopted. To interpret that provision as ruling out the taking into consideration of well-known facts of the authority’s own motion would encourage the parties to include in their pleadings, as a precaution, detailed accounts of generally known facts, and would thus risk making opposition proceedings much more burdensome.
33 It must be examined, in the light of the above considerations, whether the Board of Appeal went beyond the bounds
34 First, the appellants criticise paragraph 15 of the contested decision, which states that the average consumer’s level of attention is likely to vary according to the category of the goods in question and that ‘it is here presumed that the relevant consumer shall pay particular care and attention when buying such products’ (namely vehicles and parts therefor and omnibuses). Second, the applicants criticise the Board of Appeal for taking into consideration, in paragraph 19 of the contested decision, the conceptual impact of the name ‘Picasso’ on the market addressed and for stating that ‘it might be imagined that the majority of European consumers will link the term “PICASSO” to the most famous painter in the world in the XX century, Pablo Picasso’. Third, the applicants take the view that the Board of Appeal could not base itself on the assertions in paragraphs 20 and 21 of the contested decision that ‘the inherent distinctive character of the sign “PICASSO” is so high that any perceptible difference may be apt to exclude any likelihood of confusion on the side of the consumers concerned’ and that ‘the relevant consumer, when confronted with the name “PICASSO” and the trade mark which incorporates it, will never perceive the trade mark “PICARO” in association with the Spanish artist as referred to in the trade mark “PICASSO”’.
peal went beyond the bounds of the dispute between the parties.
36 As regards the second point mentioned above, it should be added that the Picasso estate itself indicated, on page 3 of the pleading setting out the grounds of its appeal to the Board of Appeal of OHIM: ‘[OHIM] firstly notes that PICASSO will be recognised by the European consumers as a famous Spanish painter. The Appellant shares this point of view.’
37 In those circumstances, the applicants cannot criticise the Board of Appeal for taking into consideration in the contested decision that presumed perception of the public, expressly confirmed by the Picasso estate in the pleading cited above. In this respect, the plea is thus also wrong in fact.
38 Consequently, the second plea is unfounded. First plea in law: breach of Article 8(1)(b) of Regulation No 40/94
35 In the passages from the contested decision set out above, the Board of Appeal did not introduce new facts, whether well known or not, but specified and applied the criterion which, according to settled case-law, is relevant for assessing whether there is a likelihood of confusion between the marks concerned, namely the presumed perception by the average consumer, reasonably observant and circumspect, of the category of goods or services in question (Case C-251/95 SABEL [1997] ECR I-6191, paragraph 23; Case C-210/96 Gut Springenheide and Tusky [1998] ECR I-4657, paragraph 31; and Case C-342/97 Lloyd Schuhfabrik Meyer [1999] ECR I-3819, paragraphs 25 and 26). That was thus an essential part of the Board of Appeal’s reasoning. The applicants cannot claim that, by using that criterion necessary for its assessment of the likelihood of confusion, the Board of Ap-
Arguments of the parties 39 The applicants put forward six arguments in support of this plea. 40 First, the applicants criticise the Board of Appeal for basing its decision on the assumption that the average consumer is especially careful and attentive when buying motor vehicles and parts therefor. They submit that that assumption relates only to the time of purchase, whereas, confronted with the goods in question bearing the marks at issue in situations other than that of sale, for example when seeing those vehicles on the road, even attentive consumers could be led to believe that those goods were in some way the same or that there were economic or other links between their commercial origins. The Board of Appeal thus failed to take account of the ‘post-sale confusion’ theory, although that is generally recognised
CONTENTS
in trade mark law, in particular in the judgment of the Court of Justice in Case C-206/01 Arsenal Football Club [2002] ECR II-10273. The applicants stress in this connection that the concept of likelihood of confusion includes the likelihood of indirect confusion. Further, they complain that the Board of Appeal did not state the reasons on which it based its assumption as to the particular carefulness and attentiveness of the relevant public.
41 Second, they state that the marks at issue are similar visually and phonetically. They observe that the visual, phonetic and conceptual similarity between two marks must be assessed on the basis of a comparison of the marks, without taking the composition of the relevant public into account, since that factor becomes relevant only in the overall assessment of the likelihood of confusion. 42 Third, the applicants challenge the argument that the conceptual impact of the name ‘Picasso’ prevails over the phonetic and visual similarity between the marks at issue. They point out that the word mark PICASSO has no meaning in relation to the goods concerned, namely motor vehicles. They submit that the Board of Appeal should have examined the likelihood of confusion solely with respect to those goods, and that it is not material to take into account the meanings the sign may have outside the context of motor vehicles. At the hearing, they added that taking the approach that the meaning of the term ‘Picasso’ is understood as such and always taken to refer to the painter, not to the vehicles, could have the consequence of denying the capacity of that mark to enable the goods to be distinguished, whereas it had in fact been registered by OHIM. Moreover, that approach restricted the protection of the PICASSO mark in that it could be relied on only against strictly identical signs, since the semantic content of the word would always counteract the visual and phonetic similarities which that word mark could have with slightly different signs.
43 Moreover, the applicants assert that the fact that two marks are similar with respect to one only of the relevant criteria, such as the visual or phonetic criterion, may suffice to establish the existence of a likelihood of confusion.
44 Fourth, the applicants submit that the contested decision disregards the rule that a likelihood of confusion must be found to exist all the more easily if the earlier mark is distinctive. They submit that the word sign PICASSO has a high intrinsic distinctive character, with the fact that that sign is also the name of a famous painter not, in their opinion, being relevant in this respect.
45 Fifth, they consider that, in paragraph 21 of the contested decision, the Board of Appeal wrongly looked only at the question whether the relevant public, when confronted with the earlier mark, would be inclined to think of the mark applied for. In their view, it should have considered, conversely, whether that public, when confronted with the mark applied for, would be liable to perceive a link with the earlier mark. They submit that that is the case here, in view of the similarity of the marks at issue. 46 Sixth and last, the applicants submit that the Board of Appeal misunderstood the argument that the intervener’s intention was to take advantage of the earlier mark and deliberately create confusion between the marks at issue. They acknowledge that the opposition is based on Article 8(1)(b), not on Article 8(5) of Regulation No 40/94, but point out that that argument falls within context in which the Picasso estate, in the appeal proceedings, had submitted that when filing the application for the mark the intervener was aware that products were to be launched under the earlier mark.
47 OHIM and the intervener consider that the plea is unfounded, since the difference between the marks at issue is sufficient to exclude a likelihood of confusion between them. Findings of the Court 48 Under Article 8(1)(b) of Regulation No 40/94, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected.
49 According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically linked undertakings constitutes a likelihood of confusion . 50 That case-law also states that the likelihood of confusion must be assessed globally, according to the perception by the relevant public of the signs and the goods or services in question, and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between similarity of the signs and similarity of the goods or services designated (see Case T-162/01 Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II-0000, paragraphs 31 to 33 and the case-law cited).
51 In the present case, the earlier mark within the meaning of Article 8(2)(a) of Regulation No 40/94 is a Community trade mark. Account must consequently be taken, for assessing the conditions mentioned in the preceding paragraph, of the point of view of the public in the whole of the Community. In view of the character of the goods designated by the earlier mark, the relevant public consists of the final consumers. 52 It is common ground that the goods referred to in the application for the trade mark and those designated by the earlier mark are partly identical and partly similar. 53 It must therefore be examined whether the degree of similarity between the signs in question is sufficiently great for it to be considered that there exists a likelihood of confusion between the marks. As follows from consistent caselaw, the global assessment of the likelihood of confusion must, as far as concerns the visual, phonetic or conceptual similarity of the marks in question, be based on the overall impression given by the marks, bearing in mind inter alia their distinctive and dominant components (Case T-292/01 Phillips-Van Heusen v OHIM – Pash Textilvertrieb und Einzelhandel (BASS) [2003] ECR II-0000, paragraph 47 and the case-law cited). In this respect, the applicants’ argument that the similarity between two signs is to be assessed without taking the composition of the relevant public into account, that being relevant only at the stage of the global assessment of the likelihood of confusion, must be rejected. The analysis of the similarity between the signs in question
CONTENTS
constitutes an essential element of the global assessment of the likelihood of confusion. It must therefore, like that assessment, be done in relation to the perception of the relevant public.
54 As regards visual and phonetic similarity, the applicants rightly point out that the signs at issue each consist of three syllables, contain the same vowels in corresponding positions and in the same order, and, apart from the letters ‘ss’ and ‘r’ respectively, also contain the same consonants, which moreover occur in corresponding positions. Finally, the fact that the first two syllables and the final letters are identical is of particular importance. On the other hand, the pronunciation of the double consonant ‘ss’ is quite different from that of the consonant ‘r’. It follows that the two signs are visually and phonetically similar, but the degree of similarity in the latter respect is low.
55 From the conceptual point of view, the word sign PICASSO is particularly well known to the relevant public as being the name of the famous painter Pablo Picasso. The word sign PICARO may be understood by Spanish-speaking persons as referring inter alia to a character in Spanish literature, whereas it has no semantic content for the (majority) nonSpanish-speaking section of the relevant public. The signs are not thus similar from the conceptual point of view. 56 Such conceptual differences can in certain circumstances counteract the visual and phonetic similarities between the signs concerned. For there to be such a counteraction, at least one of the signs at issue must have, from the point of view of the relevant public, a clear and specific meaning so that the public is capable of grasping it immediately (BASS, cited in paragraph 52 above, paragraph 54).
57 The word sign PICASSO has a clear and specific semantic content for the relevant public. Contrary to the applicants’ submissions, the relevance of the meaning of the sign for the purposes of assessing the likelihood of confusion is not affected in the present case by the fact that that meaning has no connection with the goods concerned. The reputation of the painter Pablo Picasso is such that it is not plausible to consider, in the absence of
specific evidence to the contrary, that the sign PICASSO as a mark for motor vehicles may, in the perception of the average consumer, override the name of the painter so that that consumer, confronted with the sign PICASSO in the context of the goods concerned, will henceforth disregard the meaning of the sign as the name of the painter and perceive it principally as a mark, among other marks, of motor vehicles.
58 It follows that the conceptual differences separating the signs at issue are, in the present case, such as to counteract the visual and phonetic similarities noted in paragraph 54 above. 59 In the context of the global assessment of the likelihood of confusion, it must also be taken into account that, in view of the nature of the goods concerned and in particular their price and their highly technological character, the degree of attention of the relevant public at the time of purchase is particularly high. The possibility raised by the applicants that members of the relevant public may also perceive the goods concerned in situations in which they do not pay such attention does not prevent that degree of attention from being taken into account. A refusal to register a trade mark because of the likelihood of confusion with an earlier mark is justified on the ground that such confusion is liable to have an undue influence on the consumers concerned when they make a choice with respect to the goods or services in question. It follows that account must be taken, for the purposes of assessing the likelihood of confusion, of the level of attention of the average consumer at the time when he prepares and makes his choice between different goods or services within the category for which the mark is registered.
law which states that trade marks which have a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character (SABEL, cited in paragraph 35 above, paragraph 24, and Case C-39/97 Canon [1998] ECR I-5507, paragraph 18). That the word sign PICASSO is well known as corresponding to the name of the famous painter Pablo Picasso is not capable of heightening the likelihood of confusion between the two marks for the goods concerned.
62 In the light of all the above elements, the degree of similarity between the marks at issue is not sufficiently great for it to be considered that the relevant public might believe that the goods in question come from the same undertaking or, as the case may be, from economically linked undertakings. The Board of Appeal was therefore right to consider that there was no likelihood of confusion between them. 63 With respect, finally, to the argument, put forward in the pleading setting out the grounds of appeal before OHIM, that the selection of the mark applied for by the intervener could only serve the purpose of taking undue advantage, in a fraudulent manner, of the commercial success of the earlier mark, the Board of Appeal rightly considered that that argument could have been material only in the context of Article 8(5) of Regulation No 40/94, on which the opposition was not based. 64 The first plea in law must therefore also be rejected. 65 It follows that the application must be dismissed in its entirety. 66
(…) Costs
Operative part: 60 It should be added that the question of the degree of attention of the relevant public to be taken into account for assessing the likelihood of confusion is different from the question whether circumstances subsequent to the purchase situation may be relevant for assessing whether there has been a breach of trade mark rights, as was accepted, in the case of the use of a sign identical to the trade mark, in Arsenal Football Club (cited in paragraph 40 above), relied on by the applicants. 61 Moreover, the applicants are wrong to rely, in the present case, on the case-
1.
Dismisses the action;
2.
Orders the applicants to pay the costs.
