491 JERYL LYNN Trade Mark In the High Court of Justice— Chancery Division

[1999] F.S.R. 491

Trade mark— Application for a declaration of invalidity— JERYL LYNN— Mumps vaccines— Whether a technical name— Whether capable of distinguishing— Prolonged use of name prior to trade mark application— Test for capacity to distinguish— Hybrid marks— Trade mark registration invalid. • Trade Marks Act 1994, ss. 3(1), 3(3)(b) and 47(1).

The respondent had registered in 1995 “ Jeryl Lynn” as a trade mark in Class 5 in respect of “ Medicinal and pharmaceutical preparations and substances for human use and for veterinary use, sanitary substances” . The name had been chosen by the respondent in the 1960s in honour of Jeryl Lynn Hilleman from whom the original mumps virus was extracted and isolated to produce a live attenuated mumps vaccine. The method of attenuating the virus to produce the vaccine had been the subject of a patent owned by the respondent. The patent had expired in the mid-1980s. The method involved the passage of the virus through 19 cycles of egg and chick cultures, to produce a “ level 19 virus” . Prior to the date of application the respondent marketed the vaccine either in isolation as “ MUMPSVAX” or in a trivalent vaccine as “ M-M-R II” . In 1992 the applicant purchased a vial of the respondent's vaccine and produced from it a new strain of attenuated mumps virus, “ RIT 4385” . The applicant used the RIT 4385 virus to produce a mumps vaccine marketed as “ PRIORIX” , and referred in its literature to RIT 4385 being “ derived from Jeryl Lynn mumps strain” . Conscious that the respondent might use its trade mark to prevent the applicant making such a reference, the applicant sought to have the trade mark registration declared invalid under section 47(1) of the Trade Marks Act 1994. The applicant submitted that at the time of registration in 1995 JERYL LYNN, when used in relation to mumps viruses or vaccines, was no more than the accepted technical name for a particular strain or family of strains of virus. Further, if this submission was correct then JERYL LYNN offended against the provisions of section 3(1)(a) as not being capable of distinguishing; section 3(1)(b) as having no distinctive character; section 3(1)(c) as consisting exclusively of indications which may serve, in trade, to designate the characteristics of the goods; section 3(1) (d) as consisting exclusively of indications which have become *492 customary in the bona fide and established practices of the trade; and section 3(3)(d) in so far as the mark had been registered in respect of things other than the Jeryl Lynn strain of viruses or vaccines containing that strain as it would deceive the public if used for those other goods. The respondent submitted that the designation JERYL LYNN was used for a man-made product; that the specification of the product was unique; that the product was unique to the respondent; that the product was world-renowned for its safety, efficacy and quality; that the above had been true for 30 years; that there would be serious and substantial deception if the designation JERYL LYNN were used for a live-attenuated mumps vaccine that did not possess the above pedigree; and that the designation JERYL LYNN could and did serve as a “ guarantee that all goods bearing it would have originated under the control of a single undertaking” . The respondent further submitted that, if it were found that the words JERYL LYNN had been used as a technical name, the words had also been used as trade mark and that it was possible to have a hybrid which performed both functions. Held, finding the trade mark registration invalid: (1) A trade mark must be capable of distinguishing goods or services of one undertaking from those of another so that it could fulfil its essential function namely, to guarantee that all goods bearing it originated under the control of a single undertaking which was responsible for the quality of the goods or services.

(2) For a sign to be capable of distinguishing for the purposes of trade mark law the sign must indicate who the product or service came from, and not merely tell the customer what the product or service was

(3) Identifying a particular product that was only available from one source would indirectly identify the source also. This could lead the relevant public to treat as the proper name of the product or service that which its source intended should only be an indication of origin. (4) The meaning of a word in a particular context was a question of fact and depended on the

conclusions to be drawn from the evidence. A sign which performed the essential function of a trade mark might be validly registered notwithstanding the fact that it also had some technical or descriptive impact. But that did not mean that a sign which overwhelmingly performed a descriptive or technical function could be validly registered. Such a sign was not capable of distinguishing within section 3(1)(a) of the Act, even if there was some trade mark recognition.

. Before turning to that, it is necessary to see how Mr Hobbs puts his client's case. It is conveniently encapsulated in a typed summary which Mr Hobbs introduced at the beginning of his submissions. The important paragraphs read as follows: • 1. The designation JERYL LYNN is used for a man-made product (live attenuated mumps virus produced from seed stock with special properties using cell cultures with special properties). • 2. The specification of the product is unique: no other product has the same characteristics. • 3. The product is unique to a particular producer (Merck): no other producer is able to supply it. • 4. The Merck product is world-renowned and sought after for its safety, efficacy and quality. • 5. All the above have been true for 30 years or thereabouts. • 6. There would be serious and substantial deception if the designation JERYL LYNN was to be used for a live attenuated mumps virus which did not possess the pedigree indicated in 1– 4 above. • 7. The designation JERYL LYNN can and does serve as a “ guarantee that all *499 goods bearing it have originated under the control of a single undertaking which is responsible for their quality” like COCA COLA, CHARTREUSE, CAMPARI etc. It appears to me that a sign which is overwhelmingly generic and cannot be used without misdescription on other products is one which is not capable of distinguishing in a trade mark senseand cannot be registered. JERYL LYNN is just such a sign. The registration is invalid.

*523 Dyson Ltd v Registrar of Trade Marks Court of Justice of the European Communities (Third Chamber)

[2007] E.T.M.R. 34

Applications; Distinctiveness; EC law; Functional designs; Household appliances; Monopolies; Registrability; Trade marks H1 Trade mark application— Transparent bin forming part of the external surface of a vacuum cleaner— Whether registrable— Whether distinctiveness acquired through de facto monopoly adequate— Reference for a preliminary ruling— Advocate-General's Opinion— Ruling.

H2 From 1993 Dyson Ltd made and sold its Dual Cyclone vacuum cleaner, a bagless cleaner in which dirt and dust is collected in a transparent plastic container forming part of the machine. In 1996 Notetry, a company owned by James Dyson, applied to register six UK trade marks for (among other things):

“ apparatus for cleaning, polishing and shampooing floors and carpets; vacuum cleaners; carpet shampooers; floor polishers; parts and fittings for all the aforesaid goods” .

The application, which was later assigned to Dyson Ltd, was withdrawn for four of those marks but maintained for the other two, which were described as follows: “ a transparent bin or collection chamber forming part of the external surface of a vacuum cleaner as shown in the representation” . A picture of the relevant version of the bagless vacuum cleaner was attached to each description.

H3 The decision of the Registrar to dismiss the application was upheld by a hearing officer in July 2002. Dyson appealed to the High Court of Justice of England and Wales, Chancery Division, which considered that the two trade marks were devoid of distinctive character and that they were also descriptive of characteristics of the goods referred to in the application. The court was however uncertain whether, on the application date in 1996, the marks had acquired distinctive character as a result of the use made of them. The court had found that, in 1996, consumers *524 recognised the transparent collection chamber as an indication that they were looking at a bagless vacuum cleaner: this told them, through advertising and the lack of any rival products that bagless

vacuum cleaners were manufactured by Dyson. The court however observed that, by 1996, the transparent collection chamber had not been actively promoted as a trade mark by Dyson. Accordingly the court, being uncertain as to whether distinctiveness acquired through a de facto monopoly fulfilled the requirement of distinctive character for the purpose of trade mark registrability, decided to stay proceedings and to refer two questions to the court for a preliminary ruling: “ 1. In a situation where an applicant has used a sign (which is not a shape) which consists of a feature which has a function and which forms part of the appearance of a new kind of article, and the applicant has, until the date of application, had a de facto monopoly in such articles, is it sufficient, in order for the sign to have acquired a distinctive character within the meaning of Article 3(3) of [the Directive], that a significant proportion of the relevant public has by the date of application for registration come to associate the relevant goods bearing the sign with the applicant and no other manufacturer?

2. If that is not sufficient, what else is needed in order for the sign to have acquired a distinctive character and, in particular, is it necessary for the person who has used the sign to have promoted it as a trade mark?”

H4 The Advocate-General advised the court to rule that: • 1. A visible functional feature of a product which is capable of taking on a multitude of appearances does not fulfil the necessary conditions to constitute a trade mark within the meaning of Art.2 of Council Directive 89/104 since it does not constitute a sign capable of being represented graphically and capable of distinguishing goods and services of one undertaking from those of other undertakings. • 2. In any event, Art.3(1)(e) , second indent, of Council Directive 89/104 precludes the registration as a trade mark of a visible functional feature of a product. H5 Held, by the Court of Justice of the European Communities: H6 1. The trade mark application in the main proceedings covered all the conceivable shapes of a transparent collecting bin forming part of the external surface of a vacuum cleaner. It is necessary, before proceeding with an interpretation of Art.3 of the Directive, to ascertain whether the subject matter of that application fulfils the conditions laid down in Art.2 . H7 2. According to settled case law, the referring court alone can determine the subject matter of the questions it proposes to refer to the court. It is solely for the national courts before which actions are brought, and which must bear the responsibility for the subsequent judicial decision, to determine in the light of the special features of each case both the need for a preliminary ruling in order to enable them to deliver judgment and the relevance of the questions which they *525 submit to the court. However, the court is not precluded from providing the national court with all those elements for the interpretation of Community law which may be of assistance in adjudicating on the case pending before it, regardless of whether that court has specifically referred to them in its questions. H8 3. Under Art.3(1)(a) of the Directive, signs that cannot constitute a trade mark are not to be registered or, if registered, are liable to be declared invalid. That provision thus precludes the registration of signs which do not meet the conditions imposed by Art.2 of the Directive, the purpose of which is to define the types of sign of which a trade mark may consist. In those circumstances, contrary to the contentions of Dyson and the UK Government, even though the wording of the questions from the national court relates solely to Art.3 of the Directive and that court did not, in the main proceedings, touch on the issue of whether the subject matter of the application in question may be viewed as a sign of which a trade mark may consist within the meaning of Art.2 of that Directive, it is necessary as a preliminary matter to consider that question. H9 4. In the present case, it is common ground that the subject matter of the application in the main proceedings is not a particular type of transparent collecting bin forming part of the external surface of a vacuum cleaner, but rather, in a general and abstract manner, all the conceivable shapes of such a collecting bin. This being so, Dyson cannot maintain that the subject matter of its application in the main proceedings is capable of being perceived visually. It follows that the subject matter of the application in the main proceedings is capable of taking on a multitude of different appearances and is thus not specific. The subject matter of the application at issue in the main proceedings is thus a mere property of the product concerned and does not constitute a “ sign” within the meaning of Art.2 of the Directive. H10 5. The court, in response to the questions referred to it by the referring court, thus rules that

Art.2 of Council Directive 89/104 to be interpreted as meaning that the subject matter of an application for trade mark registration, such as that lodged in the main proceedings, which relates to all the conceivable shapes of a transparent bin or collection chamber forming part of the external surface of a vacuum cleaner, is not a “ sign” within the meaning of that provision and therefore is not capable of constituting a trade mark within the meaning thereof. H11 6. In the circumstances it was not necessary to rule on the question relating to Art.3(3) of the Directive.

Opinion of A.G. Léger 3

Can a visible functional feature of a product constitute a trade mark within the meaning of First Council Directive 89/104 4 and, if so, under what conditions? These are essentially the questions raised by the High Court of Justice (England and Wales), Chancery Division (United Kingdom) in a dispute between Dyson Ltd (hereinafter Dyson or the applicant) and the Registrar of Trade Marks concerning the registration as a trade mark of the transparent dust collection bin integrated into Dyson vacuum cleaners.

Legal context Interternational Rule Article 7 of the TRIPS Agreement provides:

“ The protection and enforcement of intellectual property rights should contribute to the promotion of technological innovation and to the transfer *528 and dissemination of technology, to the mutual advantage of producers and users of technological knowledge and in a manner conducive to social and economic welfare, and to a balance of rights and obligations.”

Community rules

Article 2 of the Directive defines signs of which a trade mark may consist as follows:

“ A trade mark may consist of any sign 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” .

Article 3 of the Directive sets out the grounds for refusal or invalidity which may be raised against the registration of a trade mark. Article 3(1) provides:

“ The following shall not be registered or if registered shall be liable to be declared invalid:

(a) signs which cannot constitute a trade mark;

(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;

(d) 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;

(e) signs which consist exclusively of:

— the shape which results from the nature of the goods themselves, or,

— the shape of goods which is necessary to obtain a technical result, or, *529

— the shape which gives substantial value to the goods; …”

Article 3(3) of the Directive provides that a trade mark may not be refused registration or be declared invalid in accordance with para.1(b), (c) or (d) of that Article if, before the date of application for registration and following the use which has been made of it, it has acquired a distinctive character.

Article 5 of the Directive then lays down the rights that registration of the trade mark confers on its proprietor. Article 5(1) reads as follows: “ The registered trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade:

(a) any sign which is identical with the trade mark in relation to goods or services which are identical with those for which the trade mark is registered;

(b) any sign where, because of its identity with, or similarity to, the trade mark and the identity or similarity of the goods or services covered by the trade mark and the sign, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association between the sign and the trade mark.”

National legislation

The Trade Marks Act 1994 (hereinafter the 1994 Act), which transposed the Directive into English law, defines “ trade mark” , in s.1(1) thereof, as:

“ any sign capable of being represented graphically which is capable of distinguishing goods and services of one undertaking from those of other undertakings” . Under that provision:

“ a trade mark may, in particular, consist of words (including personal names), designs, letters, numerals or the shape of goods or their packaging” .

The grounds for refusal to register a trade mark are set out in s.3 of the 1994 Act . That provision is worded as follows:

“ 1. The following shall not be registered:

(a) signs which do not satisfy the requirements of Section 1(1),

(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, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services,

(d) 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.

Provided that a trade mark shall not be refused registration by virtue of paragraph (b), (c) or (d) above if, before the date of application for *530 registration, it has in fact acquired a distinctive character as a result of the use made of it. …”

The conditions laid down in Article 2 of the Directive

AG40 To constitute a trade mark within the meaning of Art.2 of the Directive, an indication must satisfy three conditions. First, it must be a sign. Secondly, that sign must be capable of being represented graphically. Thirdly, the sign must be capable of distinguishing the goods or services of one undertaking from those of other undertakings. Only indications which satisfy these three conditions may be registered as a trade mark. AG41 As is stated in the seventh recital of the Directive, Art.2 of the Directive “ lists examples” of signs which may constitute a trade mark. Those signs include “ particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging” . As can be seen from the wording of that Article, the list is not exhaustive. AG42 That provision does not mention the case of a trade mark being composed of a functional feature of a product. However, it does not exclude it expressly. It must therefore be considered

whether such a feature can satisfy the conditions laid down in Art.2 of the Directive.

AG43 Contrary to the arguments made by the applicant and the UK Government, I consider that a functional feature which forms part of the appearance of a product does not fulfil the necessary conditions under that provision to constitute a trade mark since it does not, in my view, constitute a sign capable of being represented graphically and capable of distinguishing the goods or services of one undertaking from those of other undertakings. The existence of a sign

AG44 For the purposes of applying Art.2 of the Directive, it is necessary first to establish that in the context in which it is used the transparent collecting bin whose registration is sought in fact represents a sign. As the court has noted, the purpose of that requirement is in particular to prevent the abuse of trade mark law in order to obtain an unfair competitive advantage.

Capability of being represented graphically

The court has consistently held that the graphic representation required by Art.2 of the Directive must enable the sign to be represented visually, particularly by means of images, lines or characters, so that it can be precisely identified. In order to fulfil that function, such a representation must be clear, precise, self-contained, easily accessible, intelligible, durable and objective.According to the court, the function of the graphic representability requirement is, in particular, to define the mark itself in order to determine the precise subject of the protection afforded by the registered mark to its proprietor. It thus contributes to legal certainty.

The existence of a distinctive character AG67 The distinctive character of a trade mark means that the sign serves to identify the product as originating from a particular undertaking, and thus to distinguish that product from goods of other undertakings. AG68 The assessment of the intrinsic distinctive character of a trade mark is in principle independent of the use of the sign. It depends solely on whether the sign is capable in itself of having a distinctive character.

Conclusion

AG106 In the light of the foregoing, I propose that the court give the following answers to the questions asked by the High Court of Justice (England and Wales), Chancery Division: • (1) A visible functional feature of a product which is capable of taking on a multitude of appearances does not fulfil the necessary conditions to constitute a trade mark within the meaning of Art.2 of First Council Directive 89/104 of 21 December 1988 to approximate the laws of the Member States relating to trade marks since it does not constitute a sign capable of being represented graphically and capable of distinguishing goods and services of one undertaking from those of other undertakings. • (2) In any event, Art.3(1)(e) , second indent, of Council Directive 89/104 precludes the registration as a trade mark of a visible functional feature of a product. Accordingly, the answer to be given to the national court must be that Art.2 of the Directive is to be interpreted as meaning that the subject matter of an application for trade mark registration, such as that lodged in the main proceedings, which relates to all the conceivable shapes of a transparent bin or *551 collection chamber forming part of the external surface of a vacuum cleaner, is not a “ sign” within the meaning of that provision and therefore is not capable of constituting a trade mark within the meaning thereof.

*974 Ty Nant Spring Water Limited's Application Office for Harmonisation in the Internal Market (Third Board of Appeal)

[1999] E.T.M.R. 974

Representation

• For the applicant: Urquhart-Dykes & Lord (Swansea) Trade mark application— Cobalt blue colour applied to external surface of bottle— Whether inherently distinctive— Whether distinctive through use— Geographical and economic limits to evidence of reputation — Application refused — Appeal dismissed

Legislation referred to

• Reg. 40/94, Arts 4, 7

HEADNOTE

Ty Nant applied to register as a trade mark a sign consisting of “ colour cobalt blue, when applied to the entire visible surface of a bottle containing water” . The examiner notified Ty Nant that the trade mark, consisting of a single coloured applied to a bottle, was devoid of any distinctive character and therefore was not eligible for registration under Article 7(1)(b) of the Community Trade Mark Regulation. In its response, Ty Nant claimed that it bottled water in a glass bottle of a “ highly distinctive” and innovative deep cobalt blue which had, following its launch in 1989, acquired distinctiveness. In support of that claim Ty Nant furnished a copy of a certificate for a prize it was awarded for innovative new product packaging in 1989, a list of the wholesale and *975 retail distributors and of retail outlets in the U.K. and the rest of Europe, various figures on annual sales from 1990 to 1997, a selection of advertising materials and articles showing use of the mark, as well as various attestations of companies and associations identifying the cobalt blue colour with the applicant. Ty Nant also pointed out that the mark had been registered in the U.K., Italy, Germany, Spain, the Benelux and Russia: The application was rejected and Ty Nant appealed. Held, by the Board of Appeal, that Ty Nant's appeal should be dismissed.

1. A colour is a sign and can thus constitute a trade mark. However, colour per se, without any unusual or fanciful features, is according to Article 7(1)(b) devoid of any distinctive character since it belongs in the public domain and forms part of the store of signs available to all traders. It is not capable of distinguishing the goods and services applied for from those of other undertakings and cannot serve the basic function of trade mark, unless it has become distinctive in consequence of the use which has been made of it pursuant to Article 7(3) (Wm J. Wrigley Company's application (LIGHT GREEN) Case R 122/1998-3 [1999] E.T.M.R. 214 followed). 2. As regards a claim of acquired distinctiveness, two conditions must be satisfied: (i) the trade mark must be used in the Community as a whole or, at least, in a substantial part of it, in such a way that (ii) a sufficiently large part of the relevant class of persons recognises the sign as a distinctive trade mark at the time the application is filed (Windsurfing Chiemsee v. Boots- und Segelzubehór Walter Huber und Franz Attenberger, Joined Cases C-108/97 and C-109/97 [1999] E.T.M.R. 585 applied). 3. Both of the conditions in 2 above must be fulfilled for an exception to be granted under Article 7(3) and for a sign be converted into a true trade mark. The evidence submitted by Ty Nant in this case covered the U.K. territory alone and referred to the trade mark's reputation in trade circles and not to final consumers of bottled water. Taking all the evidence into account, the Board was not persuaded that the use invoked by Ty Nant, although relevant to the U.K., had a univocal, certain and definitive meaning in the minds of the relevant consumers at Community level.

*508 Libertel Groep BV v Benelux-Merkenbureau Court of Justice of the European Communities

[2003] E.T.M.R. 41

Opinion of Advocate General Philippe Léger H1 Trade mark — Colour orange — Registrability — Whether colour registrable per se and without shape or outline — Reference to European Court of Justice — Advocate General's Opinion

HEADNOTE

H3 The applicant applied to register the colour orange at the Benelux Trade Marks Office. The application was drawn up with an attached surface coloured orange in the space reserved for the representation of the sign. In the heading allowing the colour of this sign to be indicated, the word “ orange” was mentioned. The application related *509 to various classes of goods and services relating to telecommunications. The Benelux Trade Marks Office refused the application since the mark was devoid of distinctive character and the applicant had failed to prove that the colour orange had acquired a distinguishing nature through use. The applicant appealed unsuccessfully to the Hague Gerechtshof and then to the Hoge Raad, which referred the following questions to the European Court of Justice for a preliminary ruling:

“ 1. Can a single, specific colour, reproduced as such or designated by an international code, be

capable of presenting a distinguishing nature for certain products or services, within the meaning of Art.3(1), initial section and point (b), of the Directive? If so,

(a) Under what circumstances can a single specific colour be deemed to have a distinguishing nature within that meaning?

(b) Can the fact of applying for registration for a substantial number of products or services or even for a specific product or service or a specific group of products or services be capable of changing the answer to the first question?

2. To assess the distinguishing nature a specific colour may present as a trade mark, is it necessary to examine whether there is sufficient general interest justifying this colour remaining available to everyone, as in the case of signs designating a geographical origin?

3. To answer the question of knowing whether a sign filed as a trade mark has a distinguishing nature within the meaning of Art.3(1), initial section and point (d), of the Directive, should the Benelux Trade Marks Office limit itself to assessing this distinguishing power in the abstract or should it take into account all the specific circumstances of the case, particularly the use made of this sign and the way in which it is used?”

Held, by the Advocate General, that the court should be advised to rule that Art.2 of the Council Directive 89/104 must be interpreted to the effect that a colour in itself, with no shape or outline, does not constitute a sign capable of being represented graphically used to distinguish the products or services of one undertaking from those of other undertakings.

The concept of “ colour” “ Colour is a concept that everyone understands intuitively but that is very difficult to define universally” .However, it is accepted that colour is a sensation. It is a matter of perception by the visual system and transmission to the brain of the effects of light radiation on matter. Colour does not, therefore, constitute a pre-existing objective reality that we simply have to be aware of, like a film placed on an object. It depends, first, on the nature and intensity of the light and, secondly, on the observer's visual system. Consequently, colour changes depending on its lighting and the distance from which that object is observed. Its perception also varies depending on the individuals.

Colour has been the object of several methods of organisation. Newton, to whom is attributed the first interpretation of the breakdown of complex light by means of a prism, established the seven main colours of the spectrum. Painters distinguish the primary colours, yellow, red and blue, on whose basis it is possible to produce the other, so-called “ compound” colours. For industrial applications of colour, professionals have drawn up different collections of samples rigorously specified by means of codes that enable a very large number of tones to be defined. However, the human eye can only distinguish a limited number of shades of colours with certainty. Moreover, the number of specific words for naming colours is even lower. The number of colours that can be identified and described accurately by an observer therefore remains very low. Finally, colour is a language. As it involves a sensation that reflects the appearance of things, it may lead the observer to experience feelings. It may also convey information. These feelings, like this information, are purely cultural phenomena. They are based on psychological, symbolic, religious or other conventions that vary in time and in space. In reality, however, colour has no independent existence. Starting from the interaction between light radiation and matter, it is always the attribute of something. If, depending on its intensity or its luminosity, the colour of an object draws our attention, what the brain perceives and registers is not the colour as such, but the object assuming that colour. Consequently, the visual memory, whose powerful and long-lasting nature has been shown by experience, consists of mental representations of the objects that surround us. A53 In the light of these observations, the two conditions laid down in Art.2 of the Directive should be examined.

At this stage in the analysis, it is therefore a question of assessing whether a colour in itself can have a distinguishing nature simply in the light of its intrinsic qualities. We think not, for two reasons. First, as we have just seen, an application for registration of a colour in itself does not allow us to determine the sign that will actually appear on the products or in relation to the services concerned. In our opinion, an assessment of the aptitude to have a distinguishing nature implies a specific

knowledge of what that sign is. Secondly, we believe that a colour in itself cannot fulfil the function of indicating the origin of products or services. In fact, it should be recalled that the court defined this function as seeking to “ guarantee for the consumer or the final user the original identity of the product bearing the trade mark, enabling him to distinguish that product from others of another origin without any possible confusion” . The trade mark should therefore provide a guarantee of origin of the product bearing it. It consequently has a very precise meaning.

Conclusion

Having regard to the foregoing considerations, we propose the court reply as follows to the questions raised by the Hoge Raad der Nederlanden:

“ Article 2 of the First Council Directive 89/104 issued on 21 December 1988, harmonising the legislations of the Member States on trade marks, must be interpreted to the effect that a colour in itself, with no shape or outline, does not constitute a sign capable of being represented graphically used to distinguish the products or services of one undertaking from those of other undertakings.”

*1016 KWS Saat AG v Office for Harmonisation in the Internal Market Court of Justice of the European Communities (Second Chamber)

[2005] E.T.M.R. 86

Agricultural produce; Applications; Colour; Community trade marks; Distinctiveness H1 Community trade mark application— Colour orange (HKS7) for various agricultural and horticultural products and processes— Registrability— Whether mark distinctive for goods and services— Application refused— Appeal dismissed— Further appeal to Court of First Instance— Whether applicant could limit range of goods and services during appeal hearing— Appeal allowed in part— Further appeal by applicant dismissed.

H2 The applicant sought to register as a Community trade mark, for various goods in Classes 7, 11 and 31, a shade of orange (standard reference HKS7). The goods in question included seeds, agricultural and horticultural products. Registration was also sought for plant cultivation technical and consultancy services in Class 42. The examiner refused the application on the ground that the mark was not distinctive within the meaning of Art.7(1)(b) of Regulation 40/94. The applicant's appeal was dismissed by the Board of Appeal and the applicant appealed further to the Court of First Instance, both on substantive and on procedural grounds. In the hearing before that court the applicant sought orally to limit the application to cover only industrial goods and services for Classes 7 and 11 and agro-industrial goods and services for Classes 31 and 42. The Office maintained that this was not possible. On an appeal to the Court of First Instance the applicant's appeal was allowed in respect of the application for services in Class 42, but all other grounds of appeal were dismissed. H3 In its decision the Court of First Instance held that the parties' pleadings may not change the subject matter of the proceedings before the Board of Appeal. Accordingly, the limitation of the application in the course of these proceedings was inadmissible. As to the issue of distinctiveness, the use of colours, including the shade of orange claimed or very similar shades, was not rare for those goods. *1017 The applicant's colour orange would therefore not enable the relevant public to immediately distinguish the applicant's goods from those of other undertakings which were coloured other shades of orange. Given the general use of colours for technical purposes in the sector concerned, the relevant public would not immediately disregard the possibility that the use of orange could be intended to indicate that the seeds had been treated. Treatment installations fell within the general category of agricultural machinery and it was not rare to come across orange-coloured machines. Being commonplace, the colour orange would not enable the relevant public to distinguish the applicant's installations from machines in similar shades of orange with a different commercial origin. The Board of Appeal was wrong to find that registration of the sign would unduly restrict competitors' choice of that colour to present their services or identify their undertaking, since services have no colour. Finally the court held that the Office had a duty to state the reasons on which its decisions were based. Its statement of reasons in the contested decision was brief, but still enabled the applicant to take cognisance of

the reasons why its application for registration was refused. The applicant therefore had all the information necessary to comprehend the contested decision and to challenge its legality before the Community Courts. H4 The applicant then appealed further to the Court of Justice of the European Communities. The grounds of appeal were that (i) the Board of Appeal misapplied the facts, (ii) the Board of Appeal had illegally conducted its own research on the internet and had infringed the applicant's right to a fair hearing in respect of information obtained through it, (iii) the Court of First Instance had failed to give adequate reasons,and (iv) the Court of First Instance erred by imposing more onerous criterion for the registration of colour marks than upon the registration of other marks. H5 Held, by the European Court of Justice, that the appeal would be dismissed. H6 1. An appeal to the Court of Justice may be based only on grounds relating to breaches of rules of law, to the exclusion of any appraisal of the facts. H7 2. Any illegality in the Board of Appeal's internet research would not vitiate its decision since there was sufficient evidence upon which the Board of Appeal could base its decision even in the absence of that research. H8 3. The Court of First Instance had not failed to give an adequate expression of its reasoning. H9 4. The Court of First Instance did not apply a more stringent criterion for colour trade marks than for other marks. In taking the view that the applicant's mark had no distinctive character in regard to the goods for which its registration was sought, the Court of First Instance did not err in applying Art.7(1)(b) of Regulation 40/94.

*1289 Heidelberger Bauchemie GmbH Court of Justice of the European Communities (Second Chamber)

[2004] E.T.M.R. 99

Applications; Colour; Distinctiveness; Preliminary rulings; Shape H1 Trade mark application— Combination of colours undelineated by shape— Whether abstract, undelineated colours capable of being a “ sign” — Whether such colours capable of distinguishing goods or services— Application refused— Appeal— Reference for preliminary ruling— Ruling of European Court of Justice.

H2 The applicant sought to register as a German trade mark, for various products used in the building trade, the colours blue and yellow, providing as a reproduction of the mark a rectangular piece of paper, the upper part of which was blue, the lower half being yellow. The following description of the mark accompanied the application:

“ The trade mark applied for consists of the applicant's corporate colours which are used in every conceivable form, in particular on packaging and labels.

The specification of the colours is:

RAL 5015/HKS 47 — blue

RAL 1016/HKS 3 — yellow.”

H3 The German Patent Office eventually accepted that colours are in principle able to constitute a trade mark, but rejected the application on the ground of lack of any distinctive character, whereupon the applicant appealed to the Bundespatentgericht. The Bundespatentgericht considered that it was uncertain whether abstract, undelineated marks could be treated as “ signs” capable of being represented graphically within the meaning of Art.2 of Council Directive 89/104; it was also uncertain how far the protection of abstract colour marks was compatible with the requirement of legal certainty for all operators in the market or how far it prevented the free movement of goods and services by granting the proprietors of trade marks over-extensive monopoly rights which were unreasonable from the point of view of their competitors. Accordingly the Bundespatentgericht *1290 stayed the proceedings and referred the following questions to the Court for a preliminary ruling:

“ Do colours or combinations of colours which are the subject of an application for

registration as a trade mark, claimed in the abstract, without contours and in shades which are named in words by reference to a colour sample (colour specimen) and specified according to a recognised colour classification system, satisfy the conditions for capability of constituting a trade mark for the purposes of Article 2 of [the Directive]?

In particular, for the purposes of Article 2 of the Directive, is such an ‘ (abstract) colour mark’

(a) a sign,

(b) sufficiently distinctive to be capable of indicating origin,

(c) capable of being represented graphically?” H4 Held, by the Court, that the questions referred to it should be answered as follows: H5 Colours or combinations of colours which are the subject of an application for registration as a trade mark, claimed in the abstract, without contours, and in shades which are named in words by reference to a colour sample and specified according to an internationally recognised colour classification system may constitute a trade mark for the purposes of Art.2 of the Council Directive 89/104 where: • — it has been established that, in the context in which they are used, those colours or combinations of colours in fact represent a sign; and • — the application for registration includes a systematic arrangement associating the colours concerned in a predetermined and uniform way. H6 Even if a combination of colours satisfies the requirements for constituting a trade mark for the purposes of Art.2 of the Directive, it is still necessary for the competent authority for registering trade marks to decide whether the combination claimed fulfils the other requirements laid down, particularly in Art.3 of the Directive, for registration as a trade mark in relation to the goods or services of the undertaking which has applied for its registration. Such an examinatiton must take account of all the relevant circumstances of the case, including any use which has been made of the sign in respect of which trade mark registration is sought. That examination must also take account of the public interest in not unduly restricting the availability of colours for other traders who market goods or services of the same type as those in respect of which registration is sought.

809 Philips Electronics NV v Remington Consumer Products Ltd In The Court of Appeal

5 May 1999

[1999] R.P.C. 809

Lord Justice Simon Brown Lord Justice Aldous Lord Justice Mantell Judgment delivered May 5, 1999

Trade mark— Infringement— Three headed rotary shavers— Device mark depicting shaver face— Whether infringing use must be trade mark use— Whether descriptive use— Validity— Whether mark capable of distinguishing— Whether distinctive— Whether shape of the goods— Whether shape necessary to obtain technical result— Whether shape added substantial value.

• Trade Marks Act 1938, Sched. 3. • Trade Marks Act 1994, ss.1(1), 3(1)(a),(c), 3(2), 3(3)(a), 9, 10, 11(2), 46(1)(b), 47, 103. • Directive 89/104, Arts 2, 3(1)(a),(b),(e), 3(3), 5(1)(b), 6(1)(b).

• E.C. Treaty, Art. 177. The appellant had for many years sold under its “ Philishave” mark three headed rotary shavers in which the three heads were arranged in a triangular pattern which projected slightly above a triangular base plate. The plaintiff had obtained a registered trade mark for a device consisting of a picture of the head of a three headed rotary shaver.1 The plaintiff sued the defendant for trade mark infringement, the defendant having recently introduced a three headed rotary shaver under its “ Remington” mark. At first instance, 2 the judge held that the mark was invalid as it was incapable of distinguishing (section 1(1) of the Trade Marks Act 1994) and was devoid of any distinctive character (section 3(1)(b)), that it consisted exclusively of a sign which served in trade to designate the intended purpose of the goods (section 3(1)(c)), that it consisted exclusively of a shape which was necessary to obtain a technical result (section 3(2)(b)) and which gave

substantial value to the goods (section 3(2)(c)). He rejected the defendant's contention that the mark was invalid because it consisted of a shape which resulted from the nature of the goods themselves (section 3(2)(a)). He ordered its revocation. He went on to hold that even if the mark was valid it had not been infringed. The plaintiff appealed and the defendant cross-appealed on the rejection of its section 3(2)(a) argument. *810 Held, provisionally the trade mark was invalid and not infringed but staying the appeal and referring certain questions to the European Court of Justice: (1) The fact that a trade mark had, by use, become such as to denote the goods of a particular trader did not necessarily mean that it was capable of distinguishing as required by section 1 of the Trade Marks Act 1994. (page 817) (2) A person who had had monopoly use of a trade mark for many years (as in the present case) might be able to establish that it did in fact denote his goods exclusively but that did not mean that it had a feature which would distinguish his goods from those of a competitor who entered the market. (page 817) (3) The test of registrability was the same for shapes as for words. To hold that the shape of an article was registrable in respect of the article would enable a few traders to obtain registrations of all the best designs and thereby monopolise them. (page 818) (4) The shape of an article could not be registered in respect of goods of that shape unless it contained some addition to the shape of the article which had trade mark significance. It was that addition which made it capable of distinguishing the trade mark owner's goods from the same sort of goods sold by another trader. (page 818) (5) The trade mark did not constitute a registrable mark as required by section 3(1)(a) of the Trade Marks Act 1994. (page 818) (6) The primary meaning of the trade mark was a three headed rotary shaver of the design shown. There was no evidence to show that it had not retained that meaning. In the circumstances where the appellant was the sole supplier of rotary shavers, the evidence that many people associated the shape exclusively with the appellant did not establish that the mark had acquired a secondary meaning. (page 819) (7) The trade mark contained no feature which had trade mark significance which could become a distinctive character. The mark offended section 3(1)(b). (page 819) (8) The mark should not have been registered under section 3(1)(c). It remained, even after use, a mark consisting exclusively of an indication of the kind of goods for which it was registered and of the intended purpose of those goods. (pages 819– 820) (9) In section 3(2)(a), the words “ the goods” referred to the goods in respect of which the trade mark was registered and not those for which it was intended to be used and in respect of which it was said to have acquired a distinctive character. (page 820) (10) The trade mark was registered in respect of “ electric shavers” . There was no one shape which resulted from the nature of shavers and the mark did not offend against section 3(2)(a). (page 820) (11) The purpose of section 3(2)(b) was to exclude from registration shapes which were merely functional in the sense that they were motivaled by and were the result of technical considerations. (page 821) (12) The restriction on registration imposed by the words “ which is necessary to obtain a technical result” was not overcome by establishing that there were other shapes which could obtain the same technical result. All that had to be shown to exclude the shape from registration was that the essential features of the shape were attributable only to the technical result. (page 821) (13) The purpose of section 3(2)(c) was to exclude from registration those shapes which added a substantial value to the goods over other shapes in the sense *811 that they appealed to the eye. The section required a comparison between the shape sought to be registered and the shapes of equivalent articles (page 822) (14) The evidence did not establish that the registered shape had any more value than other shapes which were shown to be as good and as cheap to produce The mark did not offend section 3(2)(c). (page 822) (15) Infringing use did not need to be trade mark use. There was nothing in sections 9 and 10

which required infringing use to be trade mark use and section 11(2) contained a comprehensive list of the exclusions that were thought appropriate. (page 823) Bravado Merchandising Services Ltd v. Mainstream Publishing (Edinburgh) Ltd [1996] F.S.R. 205 and British Sugar plc v. James Robertson & Sons Ltd [1996] R.P.C. 281 referred to. (16) The head of the defendant's shaver depicted the head of a three headed rotary shaver. This use was and would be seen as an indication as to the kind of shaver and what was its intended purpose. The defendant's use was protected by section 11(2).

Section (Article 3(1)(a) This section excludes from registration those signs which cannot constitute a trade mark as defined in section 1 (Article 2). Thus a sign which is not capable of distinguishing the goods of one undertaking from the goods of other undertakings is not registrable. Philips submitted that the evidence established that at the date of registration the trade mark did in fact distinguish their goods from those of other traders. It followed that it must be capable of distinguishing their goods from those of other traders. Remington submitted that the subsection required the Court to focus upon the trade mark as of the date of its registration and to enquire whether it had features which were capable of distinguishing. If it was a description of the goods being sold, without any capricious addition, it was not capable of distinguishing the goods of one trader from those of other traders who were entitled to manufacture and sell such goods. Philips criticised that submission of Remington because they submitted there was no requirement in the Act for any trade mark to contain a capricious addition. As the trade mark had by use become such as to denote goods of Philips, it must have been capable of distinguishing their shavers from those of other manufacturers. In my judgment any issue of fact that there was between the parties is not relevant to the decision to be arrived at in this case which depends upon the construction of the statutory provisions. I have already referred in my recitation of the background facts to the extensive advertising carried out by Philips and the large number of sales made in the United Kingdom over the years. Such advertising has in general emphasised the trade mark Philips and the brand name Philishave, but the trade mark has been used. I would not have referred to it as “ limping” whatever that may mean. Its use is better seen as supporting. The result has been that a substantial portion of traders in electrical goods and the public recognise the trade mark as being a representation of the head of the Philips three headed rotary shaver. If they saw a shaver with a head as shown in the trade mark or a picture of such a shaver they would, absent a statement to the contrary, believe that it came from Philips. They associate the shape of such a head with a rotary shaver made by Philips and nobody else. That is not surprising because Philips had, up to 1995, been the only company selling rotary shavers in the United Kingdom and their rotary shavers have been the most popular type of shaver in the United Kingdom and the majority of sales in recent times had a head as shown in the trade mark. In fact Philips have had a monopoly in the United Kingdom in rotary shavers and the public's perception reflects that fact. It is against that background that the Court must decide whether the trade mark is capable of distinguishing one trader's goods from those of another trader. I do not believe that the fact that a trade mark has by use become such as to denote goods of a particular trader necessarily means that it is capable of distinguishing as required by section 1 (Article 2). I have already pointed out that use is relevant when deciding registrability under section 3(1)(b), (c) and (d), but not under section 3(1)(a) (see Articles 3(1)(a), (b), (c) and 3(3)). That suggests that the capability of distinguishing depends upon the features of the trade mark itself, not on the result of its use. Thus a person who has had monopoly use of a trade mark for many years may be able to establish that it does in fact denote his *818 goods exclusively, but that does not mean that it has a feature which will distinguish his goods from those of a rival who comes into the market. The more the trade mark describes the goods, whether it consists of a word or shape, the less likely it will be capable of distinguishing those goods from similar goods of another trader. An example of a trade mark which is capable of distinguishing is WELDMESH, whereas WELDED MESH would not be. The former, despite its primary descriptive meaning, has sufficient capricious alteration to enable it to acquire a secondary meaning, thereby demonstrating that it is capable of distinguishing. The latter has no such alteration. Whatever the extent of the use, whether or not it be monopoly use and whether or not there is evidence that the trade and the public associate it with one person, it retains its primary meaning, namely mesh that is welded. It does not have any feature which renders it capable of distinguishing one trader's welded mesh from other traders' welded mesh. Shapes such as shown in the trade mark are pictorial description of products. The test of registrability is the same for such shapes as that for word marks. The trade mark shows the head of a particular

three headed rotary shaver and it would be recognised by the trade and public as such, albeit as one made by Philips. Even though there are a number of other designs of three headed rotary shavers that could be produced, the shape shown in the trademark is a shape which, absent patent, registered design, copyright or unfair trading protection, another trader is entitled to make. It is not capable of distinguishing Philips' shavers of that shape from those of other traders who produce shavers with a similar shaped head. I believe that is accepted by Philips; but they contend that such use of the shape by another trader is unlawful in that it would result in infringement of a valid trade mark registration. But that submission avoids the question of whether a picture of a three-dimensional article which is purely descriptive of the article is registrable. In my view the definition in the Act and the Directive prevents that happening. No doubt an application to register a picture of a reel for cotton or a flag for coffee would succeed as they are not descriptive of the goods for which registration is sought; but that does not mean that a shape of an article is registrable in respect of the article shown in the application. To so hold would enable a few traders to obtain registrations of all the best designs of an article and thereby monopolise those designs. In my view a shape of an article cannot be registered in respect of goods of that shape unless it contains some addition to the shape of the article which has trade mark significance. It is that addition which makes it capable of distinguishing the trade mark owner's goods from the same sort of goods sold by another trader. The judge was right to conclude that the trade mark did not constitute a registrable trade mark as required by section (Article) 3(1)(a). However, I do not believe that my reasoning is consistent with all that he said in British Sugar Plc v. James Robertson and Sons Ltd [1996] R.P.C. 281.

Section (Article) 3(1)(b) Section (Article) 3(1)(b) uses the words “ devoid of any distinctive character” . It would seem to follow that it is the character of the trade mark that has to be considered at the date of registration. The proviso (Article 3(3)) makes it clear that the distinctive character can be acquired as a result of use. Philips submitted that there was no class of mark which was inherently devoid of distinctive character. In the present case the trade mark, to a large proportion of the trade and the public, denoted a head of a shaver coming from Philips. Thus in *819 so far as the trade mark did not have any distinctive character at first, it had acquired it by the date of registration. Remington submitted that before a trade mark can be said to have acquired a distinctive character by use, the use had to add a secondary meaning which was a trade mark meaning to the primary meaning. The fact that the relevant trade and public associated the trade mark with Philips did not mean that it had acquired that secondary meaning in the circumstances of this case, where Philips had been the sole user of the trade mark and the sole seller of goods made according to its design. In the present case the trade mark was purely descriptive of the particular design of a shaver head and therefore could not acquire and had not acquired a distinctive character by use. It followed that the trade mark was devoid of any distinctive character. The scheme of the Directive and the Act appears to require that signs which are not capable of distinguishing are excluded for registration at the initial stage. Those which are capable of distinguishing will be excluded unless they have or have acquired some distinctive character. An example is the trademark WELDMESH to which I have referred. It is capable of distinguishing, but without use would retain its primary meaning of, welded mesh. It would therefore be devoid of any character that was distinctive. However, use could provide a secondary meaning, namely that the welded mesh to which the trade mark was applied came from a particular trader. Upon that being established it would become registrable as it would pass the dual test laid down by section (Article) 3(1)(a) and (b). The requirement under section (Article) 3(1)(b) is that the mark must have a distinctive character to be registrable. Thus it must have a character which enables it to be distinctive of one trader's goods in the sense that it has a meaning denoting the origin of the goods. In the present case the primary meaning of the trade mark is— a three headed rotary shaver of the design shown. There is no evidence to show that it has not retained such a meaning, although there is clear evidence that such a design of a head and perhaps other designs of rotary shaver heads are exclusively associated with Philips. Philips' case is based on the fallacy that extensive use of a purely descriptive mark such that it becomes associated with a trader means that the trade mark has a distinctive character. In circumstances where Philips have been the sole suppliers of rotary shavers in the U.K. the evidence relied on does not establish that the trade mark has acquired a secondary meaning. In fact I am unable to point to any feature or features of the trade mark which could be other than descriptive of a particular design of head for an electric shaver and which would enable the trade mark to acquire a distinctive character. The trade mark contains no feature which has trade mark significance which

could become a distinctive character. In my view the judge was right to conclude that the trade mark was not registrable because of section (Article) 3(1)(b) in that it was devoid of distinctive character.

Section (Article) 3(1)(c) Remington submitted that the trade mark should not have been registered as it consisted “ exclusively of signs or indications which may serve, in trade, to designate the kind, … intended purpose, … or other characteristics of goods …” The judge accepted that submission because he was of the view that the trade mark had no capricious addition and was no more than a two-dimensional reproduction of a three-dimensional working part. The evidence did not establish that the relevant public took the shape as a trade mark of Philips. Philips submitted that the judge's conclusion was wrong, basically for the same *820 reasons that he was wrong when he concluded that the trade mark was not capable of distinguishing and was devoid of any distinctive character. They did not seriously submit that, if the judge was right that the trade mark was not capable of distinguishing and was devoid of any distinctive character, he was not right to hold that this subsection also prevented registration. In the circumstances of the present case, the conclusion I have already reached, set out in relation to section (Article) 3(1)(a) and (b), mean that the trade mark should not have been registered under subsection (c). The trade mark was devoid of any distinctive character. It remained, even after use, a mark consisting exclusively of an indication of the kind of goods for which it was registered and of the intended purpose of those goods.

Section 3(2)(a) (Article 3(1)(e)) Philips supported the judge's conclusion that the trade mark did not consist exclusively of a shape which resulted from the nature of the goods themselves. Essentially he concluded that this subsection did not exclude registration as there were other shapes of three headed electric shavers. Thus the representation that was registered did not result from the nature of electric shavers. Remington challenged the reasoning and conclusion of the judge. They submitted that the words “ the goods” should be construed as meaning the goods for which the trade mark was intended to be used and in respect of which it was said to have acquired a distinctive character; in this case the head of a three headed rotary shaver. That being so, the shape exclusively resulted from the nature of the goods. In my judgment the words “ the goods” refer to the goods in respect of which the trade mark is registered. Those are the goods which it must be capable of distinguishing and in respect of which the proprietor obtains, on registration, the exclusive right to use the trade mark. The words are used to refer to any of the goods falling within the class for which the trade mark is registered. For example, registration of a picture of a banana in respect of “ fruit” would be just as objectionable as registration of that word would be in respect of “ bananas” . The purpose of the subsection is to prevent traders monopolising shapes of particular goods and that cannot be defeated by the skill of the applicant when selecting the class of goods for which registration is sought. Subsection 2(a) has to be construed in the context of subsections (b) and (c). It is intended to exclude from registration basic shapes that should be available for use by the public at large. It is difficult to envisage such shapes, except those that are produced in nature such as bananas. But I believe that the judge was right to conclude that the trade mark was not prevented from registration by this subsection. The trade mark is registered in respect of “ electric shavers” . There is no one shape, let alone that depicted in the trade mark, which results from the nature of such shavers.

Section 3(2)(b) (Article 2) The judge held that the trade mark consisted exclusively of the shape which was necessary to obtain a technical result. He in substance agreed with the dissenting judgment in the Swedish District Court. Remington supported his conclusion and *821 reasoning. Philips submitted that the conclusion reached by the majority in the Swedish District Court was correct for the reasons they gave. I will come to the rival submissions, but before doing so will set out the facts. Philips established by evidence that the shape depicted in the trade mark was not necessary to achieve a particular standard of shaving. They produced designs which, if made, would have equal technical performance to the shavers they market and could be produced at equivalent cost. To obtain such a performance it is not necessary to have three rotary heads as opposed to one or four. Nor is there any technical reason to arrange the heads in an equilateral triangle configuration as opposed to for example a single row, a crescent or an isosceles triangular formation.

Philips submitted that on the evidence the judge was wrong when he came to the conclusion he did, whether their submissions or those of Remington as to the meaning of the subsection were right. I will come to that submission, but before doing so must deal with the difficult question of construction which divided the parties. Philips pointed to the word “ exclusively” to support their submission that the whole of the shape must obtain a technical result. They submitted that the word “ necessary” , introduced during drafting of the Directive, limited the exclusion to those shapes which were necessary for the technical result of the goods. Thus the trade mark was not excluded from registration because the technical result, shaving with rotary cutters, can be achieved at equivalent cost and with equivalent efficiency with a number of different shapes of three headed rotary shavers. Thus according to Philips if there are equally good shapes available, the subsection does not exclude registration. That submission found favour with the majority of the Swedish court (see p. 390). Remington do not dispute the conclusions of fact which I have set out above. They submitted, rightly in my view, that the evidence established that the essential features of the shape shown in the trade mark are designed to achieve and do achieve a technical result. That they submit is sufficient to bar registration of the trade mark. If a total analysis of all the essential features of the shape concludes that they are there for technical reasons, namely to obtain the technical results, then the shape is not registrable. That submission formed the basis of the dissenting judgment in Sweden and was accepted by Jacob J The subsection must be construed so that its ambit coincides with its purpose. That purpose is to exclude from registration shapes which are merely functional in the sense that they are motivated by and are the result of technical considerations Those are the types of shapes which come from manufacture of patentable inventions. It is those types of shapes which should not be monopolised for an unlimited period by reason of trade mark registration, thereby stifling competition. Registrable trade marks are those which have some characteristic which is capable of and does denote origin. In my judgment the restriction upon registration imposed by the words “ which is necesary to obtain a technical result” is not overcome by establishing that there are other shapes which can obtain the same technical result. All that has to be shown is that the essential features of the shape are attributable only to the technical result. It is in that sense that the shape is necessary to obtain the technical result. To adopt the meaning suggested by Philips will enable a trader or traders to obtain registration of all the alternative shapes that were practicable to achieve the desired technical result. That would result in the subsection being given a *822 meaning which would not achieve the purpose for which I believe it was intended. I agree with the judge and with the dissenting judgment in the Swedish District Court. As to Philips' submission that whatever the construction of the subsection their trade mark is registrable, I believe that it is founded upon a misapprehension of the facts. As I have already pointed out, the trade mark does not contain any feature having trade mark significance. It is a combination of technical features produced to achieve a good practical design. I conclude that the judge was right in this respect also.

Section 3(2)(c) (Article 3(1)(e)) The judge said:

“ Good trade marks add value to goods— that is one of the things they are for. So one must not take this exclusion too literally.”

He must be right. He went on:

“ I think that what is meant is an exclusion of shapes which exclusively add some sort of value, design or functional appearance or perhaps something else but I cannot think of anything (to the goods disregarding any value attributable to a trade mark) i.e. source identification (function).”

The judge concluded that the shape shown in the trade mark was recognised as having an engineering function and for that reason it added substantial value to the product and was unregistrable. Philips submitted that the exclusion in this subsection was aimed at preventing a trader from monopolising by way of a trade mark registration shapes which added a substantial value to the goods over other shapes, e.g. a lampshade, a telephone designed to appeal to the eye. Such designs

should be protected as registered designs or the like protection, not by trade mark registration. They went on to submit that the shape shown in the trade mark did not have that character and it did not give it any substantial value when compared with the value of other equivalent shapes. Thus the trade mark was not excluded from registration by this subsection. I have been persuaded by Philips that the construction placed on this subsection by the judge was not correct. There may be overlap between this subsection and the subsection which excludes shapes necessary to obtain a technical result, but the purpose is different. The latter is intended to exclude functional shapes and the former aesthetic-type shapes. Thus the fact that the technical result of a shape is excellent and therefore the article can command a high price does not mean that it is excluded from registration by subsection (c). The subsection is only concerned with shapes having “ substantial value” . That requires a conclusion as to whether the value is substantial, which in my view requires that a comparison has to be made between the shape sought to be registered and shapes of equivalent articles. It is only if the shape sought to be registered has, in relative terms, substantial value that it will be excluded from registration. *823 In the present case, the shape registered by Philips has a substantial reputation built up by advertising and reliability and the like. That in my view is not relevant. What has to be considered is the shape as a shape. If that is done I do not believe that the evidence established that the registered shape has any more value than other shapes which were established to be as good as and as cheap to produce as that which is registered. In my judgment, registration was not prevented by this subparagraph.

*549 Procter & Gamble v Office for Harmonisation In the Internal Market (Trade Marks and Designs)

(Case T-63/01) Court of First Instance of the European Communities (Fourth Chamber)

12 December 2002

[2003] E.T.M.R. 43

Before: M. Vilaras ( President), V. Tiili and P. Mengozzi 12 December 20021

H1 Representation

• For the appellant: Thierry van Innis (lawyer) • For the Office: O. Montalto and E. Joly H2 Community trade mark application — Figurative mark consisting of elevations of a soap shape (Class 3: soaps) — Registrability — Whether devoid of distinctive character — Whether remittal of application to Board of Appeal which previously refused the application deprived applicant of its right of defence — Application refused — Appeal dismissed

Legislation referred to

• Council Regulation 40/94, Arts 7(1)(b), (e)(i)– (ii), 44(2), 79, 84, 132

HEADNOTE

H4 The applicant sought to register a figurative Community trade mark for soaps (reproduced in the judgment). The examiner rejected the application on the ground that the mark consisted exclusively of a *550 shape which resulted from the nature of the goods themselves, under Regulation 40/94, Art.7(1)(e)(i). The Third Board of Appeal confirmed the examiner's decision on the grounds, among others, that the sign consisted exclusively of the shape resulting from the nature of the goods themselves, that the sign consisted of a shape of goods which was necessary to obtain a technical result under Art.7(1)(e)(ii) and that the sign was devoid of any distinctive character, under Art.7(1)(b). The Court of First Instance subsequently annulled the decision of the Board of Appeal on the grounds, among others, that the Board of Appeal had infringed the applicant's rights of defence by failing to invite it to submit its observations on two new absolute grounds for refusal which it had applied of its own motion under Arts 7(1)(b) and 7(1)(e)(ii) of Regulation 40/94 and that the Board had erred in law in refusing registration of the mark applied for on the ground that it consisted exclusively of a shape which resulted from the nature of the goods themselves, as provided for in Art.7(1)(e)(i), since that provision did not apply when there were other shapes of soap bar in the trade which did not possess

the features of the shape of the soap in issue. H5 With a view to compliance with the Court's Soap bar shape judgment, the Third Board of Appeal invited the applicant to submit observations on the application of Arts 7(1)(b) and 7(1)(e)(ii) to the present case. The Board subsequently dismissed the application for registration, being of the view that that the sign in issue was devoid of any distinctive character, as provided for in Art.7(1)(b). The applicant appealed, claiming that its right of defence had been infringed in that the case had been remitted to the same Board which previously rejected the application and that the Board's decision on distinctive character under Art.7(1)(b) was wrong. H6 Held, by the Court of First Instance, that the applicant's appeal should be dismissed with costs: H7 1. Since the Boards of Appeal are part of the Office for Harmonisation in the Internal Market and cannot be classified as “ tribunals” , the applicant could not properly rely on a right to a fair “ hearing” before the Boards of Appeal of the Office. Additionally, the rights of the defence in proceedings before the Boards of Appeal are guaranteed by Art.132 of Regulation 40/94, which sets out the situations in which members of the Boards may be excluded or objected to and, in particular, which provides that members “ suspected of partiality” may be objected to by any party. However, no objection is admissible under that provision if the party concerned has taken a procedural step while nonetheless being aware of a reason for objection, which was the case here. H8 2. The claimed shape of the applicant's mark was essentially a rectangular parallelepiped with rounded edges. A rectangular parallelepiped is a shape commonly used for soaps. Where the claimed *551 shape is only a slight variation on the various parallelepipedal shapes commonly used for soaps, it will not enable the relevant public to distinguish immediately and with certainty the applicant's soaps from those having a different trade origin. Further, the presence of concave profiles in the shape claimed by the applicant does not significantly affect the outward appearance of the soap and cannot therefore be accepted as constituting a perceptible difference by comparison with other soap bar shapes normally used. H9 3. Even if the concave profiles did hold the consumer's attention, he would not immediately perceive them as an indication of trade origin. Convex or concave profiles are features which will be primarily interpreted as a functional feature making the soap easier to grip or as an aesthetic finish. They will not therefore be directly perceived and remembered as constituting a distinctive sign and will not be capable of being used by the relevant public to distinguish beyond any confusion a soap of that shape from similarly-shaped soaps.

Mag Instrument Inc v Office for Harmonisation in the Internal Market (C– 136/02 P)

Court of Justice of the European Communities (Second Chamber) 7 October 2004

[2005] E.T.M.R. 46

C.W.A. Timmermans ( President of the Chamber), C. Gulmann, J.-P. Puissochet, J.N. Cunha Rodrigues and F. Macken:

7 October 20041

Applications; Community trade marks; Distinctiveness; Expert evidence; Right to fair and public hearing; Shape; Three dimensional marks H1 Community trade mark application— Three-dimensional shape of torches for torches— Application rejected by OHIM for lack of distinctiveness— Appeal to Court of First Instance— Appeal refused— Appeal to European Court of Justice— Relationship between Arts 7(1)(b) and 7(1)(c) in shape mark cases— Importance of comparing applied-for shape to common shape of the goods in question in assessing distinctiveness— Relevance of expert evidence and other evidence to the assessment of distinctiveness— Right to a fair hearing— Ruling.

H2 The applicant applied to register as Community trade marks the three-dimensional shape of five torches, in respect of goods in Classes 9 and 11, particularly torches. The Examiner refused the application on the ground of lack of distinctiveness under Art.7(1)(b) of Regulation 40/94. On appeal the OHIM Board of Appeal found that, while the torch shapes had numerous attractive features, none of those features was inherently distinctive in the sense that they would indicate that the torches came from a specific source. The applicant appealed to the Court of First Instance (“ CFI” ), which upheld the Board of Appeal's decision. The CFI found in particular that

distinctiveness had to be assessed from the standpoint of the perceived expectations of the average consumer by reference to how the shape mark in question varied from the common shape of the goods in question. The applicant then appealed to the European Court of Justice (ECJ). H3 Held, by the Court, that the appeal would be dismissed. H4 1. The CFI did not, as the applicant alleged, separate the marks in question into their component parts when considering their registrability, but correctly considered the overall impression given by each of them. H5 2. The applicant's argument that the fact that a shape was a “ variant” of a common shape of a type of product was of itself sufficient to render that shape *585 distinctive under Art.7(1)(b) was flawed. Although the criteria for assessing the distinctive character of three-dimensional marks consisting of the shape of a product are the same as those that apply to other categories of trade marks, consumers are not used to making assumptions about the origin of a product on the basis of its shape. Accordingly, as a matter of consumer perception, shapes may be less likely to be viewed as trade marks than word or figurative marks. The more closely the shape applied for resembles the shape most likely to be taken by the product in question, the greater the likelihood that the shape will be devoid of distinctive character. Only marks which depart significantly from the norm or customs of the sector, and which therefore fulfil the essential function of indicating origin, will not be devoid of distinctive character. H6 3. Contrary to the applicant's submission the CFI had not taken the view that consumers would, as a matter of principle, fail to recognise the shape of goods as an indication of their origin. H7 4. The applicant's argument that the wide variety of designs leads consumers to notice the shape of goods and that, accordingly, consumers would regard such variations as might arise as indicating the different origins of those goods, was inadmissible. This was because that argument sought to have the ECJ substitute its own appraisal of the facts and evidence for that of the CFI. H8 5. Although the assessment of a sign for the purposes of Art.7(1)(b) must be carried out in relation to the presumed expectations of the average consumer, evidence based on the actual perception of the mark by consumers may, in certain cases, provide guidance as long as that evidence shows that consumers did not need to become accustomed to the mark through the use made of it. Instead, it must have immediately enabled them to distinguish the goods or services bearing the mark from the goods or services of competing undertakings. The CFI did not fail to take into account the evidence of the actual perception of consumers. However, the evidence presented to that court only focused on consumer perceptions after the torches in question had been on the market for many years and when consumers were therefore accustomed to their shape. Further, the applicant had itself accepted that the evidence could have related to consumer perception that was caused by use in the trade. H9 6. The CFI was entitled to hold that the evidence presented only showed that the marks in question may have become distinctive in consequence of the use which had been made of them, without distorting the evidence. H10 7. The CFI had not failed to take into account the applicant's evidence that the torches possessed distinctive character because of the functional and aesthetic qualities of their shapes and their atypical designs. It had considered these features of the torches but had not considered them sufficient to confer distinctiveness on the marks. Instead, the CFI found that the evidence as to the excellence of the design and aesthetic and functional qualities of the torches showed that the marks might only become distinctiveness because of the use made of them rather than that they possessed distinctive character ab initio. H11 8. The CFI was not bound to agree with the evidence of the expert appointed by the applicant. Instead it was entitled to undertake its own appraisal of the distinctiveness of the marks in question.

*586 H12 9. The fact that the design of the torches enjoyed international recognition as a result of its high quality did not mean that the marks were distinctive ab initio. H13 10. The CFI was entitled to refuse to hear the author of the expert's report produced by the applicant. The CFI is the sole judge of any need for the information available to it concerning the cases before it: this determination cannot be reviewed by the ECJ unless (i) there is a clear

sense that evidence has been distorted; or (ii) the substantive inaccuracy of the CFI's findings is apparent from the documents in the case file. In this case the CFI, by deciding that it was not necessary to hear the expert witness for the purpose of appraising the distinctive character of the marks, did not infringe the applicant's right to be heard. H14 11. The CFI's failure to take into account other evidence produced by the applicant in which it claimed to show that other manufacturers use a very wide variety of torch shapes and that the marks in question can be clearly distinguished from all those shapes could not be challenged in the absence of any evidence of distortion of the facts or evidence as it would involve challenging the CFI's appraisal of the facts. H15 12. The applicant was wrong to argue that the CFI misconstrued Art.7(1)(b) by basing its reasoning in finding that the marks lacked distinctiveness only on general propositions which were unsupported by any evidence. The CFI's position that consumers were not used to viewing the shapes of goods as distinctive of their origin and therefore that it was harder to show that three-dimensional marks were distinctive could not be challenged in so far as it was a finding of fact, in any event. The CFI's findings were supported by evidence and its appraisal of the facts could not be reviewed unless the facts or evidence submitted to the CFI had been distorted.

Eurocermex SA v Office for Harmonisation in the Internal Market Case C-286/04 P

Court of Justice of the European Communities (First Chamber) 30 June 2005

[2005] E.T.M.R. 95

P. Jann, President of the Chamber, K. Lenaerts, K. Schiemann, E. Juhász and M. Ileŝiĉ: 30 June 20051

Applications; Bottles; Community trade marks; Distinctiveness; Shape; Three dimensional marks; Trade marks H1 Community trade mark application— Three-dimensional shape (bottle containing liquid and stopped up with slice of lemon— Whether distinctive— Application refused— Appeal dismissed— Further appeals dismissed.

H2 Eurocermex applied to register, as a Community trade mark, a three-dimensional shape consisting of a clear bottle, filled with a yellow liquid and with a long neck, into which a slice of lemon with a green skin had been plugged. Registration of this shape was sought for various goods including beers, mineral and aerated waters and fruit juices in Class 32 and restaurants, bars and snack bars in Class 42. The Examiner refused the application for lack of distinctiveness under Art.7(1)(b) of Regulation 40/94. The Board of Appeal rejected an appeal against the Examiner's decision for all goods except mineral water. Eurocermex's appeal to the Court of First Instance was dismissed for want of inherent distinctiveness under Art.7(1)(b) and for lack of distinctiveness acquired through use under Art.7(3), whereupon the company appealed further to the European Court of Justice. H3 As to refusal of registration under Art.7(1)(b) it argued, first, that, when assessing whether the mark had distinctive character, the Court of First Instance did not consider, as it was required to do, the overall impression given by the mark, but adopted the wrong approach by separating the mark into its component parts and examining separately the shape of the bottle, the presence of the piece of lemon and the colours used. It further maintained that, on the date upon which it filed its application, the association of this particular shape of bottle, of the piece of lemon and of the claimed colours yellow and green was specific to its products and that the mark therefore enabled the average consumer to identify the origin of the products and services marketed under it. H4 As to refusal of registration under Art.7(3) it argued that, in light of the documents put in evidence, the mark had been widely promoted in a vigorous, *1119 constant and continuous manner, so that it was fully associated by the public with its business. H5 Held, by the court, that the appeal should be dismissed. H6 1. The Court of First Instance, after examining separately each of the elements comprising the mark applied for, found that the mark was to be presumed to lack any distinctive character. However, it then continued its analysis by investigating in detail whether the mark, taken as a whole, displayed such character. It therefore correctly based its assessment as to whether the

mark had distinctive character on the overall impression which was conveyed by the shape and the arrangement of the mark's colours. H7 2. The appeal as to whether the mark was distinctive on the facts was inadmissible since its substance consisted of nothing more than a request to the court to substitute its own conclusions in relation to the facts for that of the lower court. H8 3. The appeal as to whether the mark had acquired distinctiveness through use was also inadmissible, since no distortion of the facts or the evidence put before the court was alleged by Eurocermex. This being so, it was unnecessary to consider whether documentary evidence submitted by Eurocermex, to which OHIM had taken exception, should be excluded on the basis that they had not been placed before the Board of Appeal or the Court of First Instance.

Bongrain SA's Trade Mark Application Court of Appeal (Civil Division)

17 December 2004

[2004] EWCA Civ 1690

[2005] E.T.M.R. 47

Potter L.J., Longmore L.J., Jacob L.J.: 17 December 20041

Applications; Distinctiveness; Food; Shape; Sufficiency of evidence; Three dimensional marks; Trade marks H1 Trade mark application— Three-dimensional product shape (Class 29: cheeses)— Whether sign devoid of distinctive character— Application refused— Appeal— Criteria for determination of distinctiveness of product shapes— Appeal refused.

H2 The applicant sought to register as a UK trade mark (i) a plain three-dimensional shape and (ii) the same shape with a “ ridged effect” on the surface (both illustrated in the report). Registration of the mark was originally sought in respect of cheese and dairy products (Class 29), but after the initial refusal of the application the applicant offered to limit the goods to “ cheese” alone. The mark was intended for use on a French cheese that was supplied as a whole cheese in a “ six-lobed” or “ flower” shape with some superficial ridging. The application was not limited with respect to the colour of the cheese, its rind or wrapping and was irrespective of any label that would be attached to the cheese at the point of sale. The application was refused on the ground that the marks were devoid of distinctive character under the Trade Marks Act 1994 s.3(1)(b) , which implemented Council Directive 89/104 Art.3(1)(b). H3 On appeal, the applicant submitted that the shape was strikingly unusual and that its unusual character was sufficient to vest it with distinctive character so as to entitle it to registration. The applicant also maintained that the shape was distinctive in fact. H4 Held, by the Court of Appeal, that the appeal would be dismissed: H5 1. The trial judge had not erred in taking “ other dairy goods” into account when assessing distinctiveness, even though the applicant had offered to limit the goods to “ cheese” alone. Butter and cheese where closely linked in the public mind and, although they may not be sold in the same refrigerators in some supermarkets, they are often solder together in other kinds of shops, particularly delicatessens. H6 2. The public interest in avoiding the depletion of the stock of certain types of marks which are in finite supply is not limited to colour marks and there is no special rule for any subcategory of sign for which registration is sought. H7 3. The fact that the shape of the cheese was considered by the judge to make it easier to cut and was therefore liable to an objection under Art.3(1)(c) in that the *605 mark indicated the product's intended purpose did not immunise it from an objection under Art.3(1)(b) that the mark was devoid of distinctive character. This is because, although the various grounds of objection are independent, they may overlap. H8 4. A fancy shape is not necessarily enough to confer inherent distinctive character for the purpose of trade mark registration. The fact that a shape is fancy will not necessarily mean that consumers will view it as a badge of origin simply because it is unusual for the goods concerned. What is essential is that the sign be perceived as performing the function of a trade mark which is

to indicate origin. H9 5. There is a spectrum of the kinds of marks that may be registered with regard to their public perception. Towards the least distinctive end of this spectrum are shapes of containers. Even containers may be perceived as being chosen especially by the maker of the contents to give a message about the origin of the goods they contain. At the very end of the spectrum, the shape of goods is unlikely to convey such a message. H10 6. The European Court of Justice did not rule that fancy shapes, which depart significantly from the norm for those goods, must fulfil the essential function of a trade mark. Instead the court said that such shapes may fulfil the essential function of a trade mark, depending of the presumed expectations of an average consumer ( Henkel v OHIM, Joined Cases C– 456/01 P and C– 457/01 P, 29 April 2004 explained). H11 7. Even where shapes are not initially perceived as trade marks, they can become trade marks if they are accepted as trade marks by the relevant public and are thus registrable under Art.3(3). H12 8. No other cheese shape on the market was registered as a trade mark. Consumers do not expect to eat trade marks and would be astonished to be told that the shape of the cheese in question was a trade mark. Even if a consumer recognised the shape of Bongrain's cheese when looking for a cheese he had eaten before, it could not be said without establishing use and recognition that he would regard the shape alone as giving him a guarantee of origin. If there was established use, the supposition that the shape was seen as a trade mark might be unrealistic if the cheese he saw was of a different colour or bore a different label or wrapping.

H13 9. The evidence concerning acquired distinctiveness was inadequate. What took Bongrain four and a half years to put together could have been put together in a few weeks. The Trade Mark Registry is entitled to be firm about requirements for evidence of acquired distinctive character because of the public interest in disposing of trade mark applications one way or another. In any event, the evidence that was eventually submitted was inadequate.

Ralf Sieckmann v Deutsches Patent- und Markenamt (Case C-273/00)

Court of Justice of the European Communities 12 December 2002

[2003] E.T.M.R. 37

HEADNOTE

H5 The applicant deposited with the German Patent and Trade Mark Office a trade mark for various services in Classes 35, 41 and 42. In the section of the application form headed “ Reproduction of the Trade Mark” , the applicant referred to the following description:

“ … the pure chemical substance methyl cinnamate (= cinnamic acid methyl ester), whose structural formula is set out below. Samples of this olfactory mark can also be obtained via local laboratories listed in the Gelbe Seiten (Yellow Pages) of Deutsche Telekom AG or, for example, via the firm E. Merck in Darmstadt. C6H5-CH = CHCOOCH3.”

H6 An addendum to that description read:

“ The trade mark applicant hereby declares his consent to an inspection of the files relating to the deposited olfactory mark methyl cinnamate pursuant to Paragraph 62(1) of the Markengesetz and Paragraph 48(2)of the Markenverordnung (Trade Mark Regulation)” .

H7 The applicant also submitted an odour sample in a container, stating that the scent was usually described as “ balsamically fruity with a slight hint of cinnamon” . H8 The application was refused on the ground that it was doubtful whether the applicant's mark was distinctive and whether it was capable of being represented graphically. It was not necessary to determine the issue of graphic representation because the lack of distinctive character precluded its registration in any event. H9 The applicant appealed to the Bundespatentgericht, which held that the applicant's mark was capable of distinguishing the services for which registration was sought and was not purely descriptive

of them. However, it doubted whether an olfactory mark could satisfy the requirement of graphic representation. The Bundespatentgericht accordingly stayed the proceedings and referred the following questions to the court for a preliminary ruling:

“ (1) Is Art.2of … Council Directive … 89/104 … to be interpreted as meaning that the expression signs capable of being represented graphically covers only those signs which can be reproduced directly in their visible form or is it also to be construed as meaning signs— such as odours or sounds— which cannot be perceived visually per se but can be reproduced indirectly using certain aids? *468 (2) If the first question is answered in terms of a broad interpretation, are the requirements of graphic representability set out inArt.2 satisfied where an odour is reproduced: • (a) by a chemical formula; • (b) by a description (to be published); • (c) by means of a deposit or • (d) by a combination of the abovementioned surrogate reproductions?”

H10 Held, that the questions referred by the Bundespatentgericht should be answered as follows: H11 1. Article 2 of Council Directive 89/104 must be interpreted as meaning that a trade mark may consist of a sign which is not in itself capable of being perceived visually, provided that it can be represented graphically, particularly by means of images, lines or characters, and that the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective. H12 2. In respect of an olfactory sign, the requirements of graphic representability are not satisfied by a chemical formula, by a description in written words, by the deposit of an odour sample or by a combination of those elements.

The first question

25 By its first question, the referring court seeks essentially to ascertain whether Art.2 of the Directive must be interpreted as meaning that a trade mark may consist of a sign which is not in itself capable of being perceived visually. *473

Observations submitted to the court 26 Mr Sieckmann claims that Art.2 of the Directive does not preclude an olfactory mark from being capable, in principle, of being registered. He submits that such a mark is covered by that provision, as are acoustic marks, colours, holograms and other “ non-traditional” marks. 27 He submits that “ represented graphically” should be understood as “ represented, or electronically represented or deposited in another way” . In his submission, the structural chemical formula should always be deposited at the Deutsches Patent- und Markenamt with a description or a deposit of the sign. He also claims that the mark at issue in the main proceedings can be obtained in normal quantities from local laboratory suppliers or in part directly from manufacturers and distributors of fine organic chemicals. By knowing the chemical name, which should be published, once they had purchased that chemical and irrespective of the sample's deposit and of publication of the mark's olfactory description, third parties would be able to form an exact, objective idea of the mark and, where appropriate, to compare it with other olfactory characteristics. 28 The Austrian Government considers that the field of protection of registered marks results from entries in the trade marks register, which enable the public to find out about third parties” rights to exclusivity. It submits that the possibility of perceiving registered marks visually, by consulting that register, is extremely important. It recalls that, according to the long-established practice of the Austrian Patents Office, the protection afforded to trade marks may be enjoyed not only by signs which are capable of being directly represented graphically, that is, two-dimensional marks, but also three-dimensional marks, which must be specifically designated as such in the registration procedure. 29 According to that government, it seems to be necessary to assess sound or acoustic signs differently from olfactory signs in respect of the degree to which such signs can be determined by means of graphic representation. As regards acoustic signs, it is possible for graphic representation to determine to a relatively high degree the object to be protected. It is however different, according to the Austrian Government, for olfactory signs. 30 According to the UK Government, it is recognised that the effective operation of the trade mark system requires clarity and precision in the definition of any mark entered in public registers. It points

out that, in the Directive, there is no restriction on the manner in which a mark may be represented graphically and it is sufficient for the mark proposed for registration to be capable of representation in a form *474 which enables it to be identified and which is sufficiently clear and precise for a user of the trade mark register to be able accurately to ascertain what the sign is from that register. 31 The UK Government submits that the representation as it appears on the register must satisfy the following requirements: first, it should be a sufficiently self-contained representation of the sign in question; next, it should be able to stand in place of the sign used or proposed to be used by the applicant because it clearly and precisely represents solely that sign; finally, it must be understandable by persons inspecting the register. That government considers that there is no reason in principle why an olfactory mark should not be capable of being graphically represented within the meaning of Art.2 of the Directive. 32 The Commission submits that, because of the wording of Art.2 of the Directive, which contains a non-exhaustive list of signs of which a trade mark may consist, it is possible that trade marks may also consist of signs— such as olfactory signs— which admittedly cannot be perceived visually per se, but can be made visible by being represented graphically. 33 However, in the Commission's submission, a sign is capable of being registered as a trade mark only if the subject of the registration application can be clearly and precisely defined. The purpose of graphic representation is to give a clear, precise and objective image of the mark. That point is particularly important in a legal system where rights in a trade mark are acquired by deposit and entry in a public register. In such a system, complete graphic representation of a mark must thus be guaranteed by the register itself so that the exact scope of the protection resulting from registration is determined and the rights conferred by the mark are in particular demarcated from those arising from other marks.

Findings of the court 34 It should first be recalled that, as is stated in the 10th recital in the preamble to the Directive, the function of the protection afforded by a trade mark is in particular to guarantee the mark as an indication of origin. 35 It is also clear from the court's case law that the essential function of a trade mark is to guarantee the identity of the origin of the marked product or service to the consumer or end-user by enabling him, without any possibility of confusion, to distinguish that product or service from others which have another origin and that, for the trade mark to be able to fulfil its essential role in the system of undistorted competition which the EC Treaty seeks to establish, it must offer a *475 guarantee that all the goods or services bearing it have been manufactured or supplied under the control of a single undertaking which is responsible for their quality (see, in particular, Case C-349/95 Loendersloot [1997] E.C.R. I-6227, paras 22 and 24; Case C-39/97 Canon [1998] E.C.R. I-5507, para.28, and Philips, para.30). 36 The purpose of the Directive, as stated in the first and seventh recitals in the preamble thereto, is to approximate the trade mark laws at present applicable in the Member States and to make the conditions for obtaining and continuing to hold a registered trade mark identical in all Member States, in order to abolish disparities between those laws which may impede the free movement of goods and freedom to provide services and may distort competition within the common market. 37 The registration system for trade marks constitutes an essential element of their protection, which contributes, in respect of both Community law and the different national laws, to legal certainty and sound administration. 38 In that regard it should be noted, first, as is stated in the fourth recital in the preamble to the Directive, that acquisition of the rights in a mark results, on the one hand, from depositing and registering the mark and, on the other, from use. However, Art.1 thereof provides that the Directive is to apply only to trade marks which are the subject of registration or of an application for registration in a Member State or in the Benelux Trade Mark Office or of an international registration having effect in a Member State. Furthermore, the sixth recital in the preamble to Council Regulation (EC) No.40/94 of 20 December 1993 on the Community trade mark ([1994] O.J. L11/1) also states that the rights in a Community trade mark may not be obtained otherwise than by registration. 39 Next, Art.2 of the Directive provides that a trade mark may consist of any sign, provided that it is, first, capable of being represented graphically and, second, capable of distinguishing the goods or services of one undertaking from those of other undertakings. 40 Furthermore, according to the rule laid down in Art.3(1)(a) of the Directive, signs which cannot

constitute a trade mark are not to be registered or if registered are to be liable to be declared invalid. 41 Finally, under Art.5(1) of the Directive, the registered trade mark is to confer on the proprietor exclusive rights therein. The exact scope of those rights is guaranteed by registration itself. 42 In the light of those considerations, it must be determined whether Art.2 of the Directive is to be interpreted as meaning that a trade mark *476 may consist of a sign which is not in itself capable of being perceived visually. 43 The purpose of Art.2 of the Directive is to define the types of signs of which a trade mark may consist. That provision states that a trade mark may consist of “ particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging …” . Admittedly, it mentions only signs which are capable of being perceived visually, are two-dimensional or three-dimensional and can thus be represented by means of letters or written characters or by a picture. 44 However, as is clear from the language of both Art.2 of the Directive and the seventh recital in the preamble thereto, which refers to a “ list [of] examples” of signs which may constitute a trade mark, that list is not exhaustive. Consequently, that provision, although it does not mention signs which are not in themselves capable of being perceived visually, such as odours, does not, however, expressly exclude them. 45 In those circumstances, Art.2 of the Directive must be interpreted as meaning that a trade mark may consist of a sign which is not in itself capable of being perceived visually, provided that it can be represented graphically. 46 That graphic representation must enable the sign to be represented visually, particularly by means of images, lines or characters, so that it can be precisely identified. 47 Such an interpretation is required to allow for the sound operation of the trade mark registration system. 48 First, the function of the graphic representability requirement is, in particular, to define the mark itself in order to determine the precise subject of the protection afforded by the registered mark to its proprietor. 49 Next, the entry of the mark in a public register has the aim of making it accessible to the competent authorities and the public, particularly to economic operators. 50 On the one hand, the competent authorities must know with clarity and precision the nature of the signs of which a mark consists in order to be able to fulfil their obligations in relation to the prior examination of registration applications and to the publication and maintenance of an appropriate and precise register of trade marks. 51 On the other hand, economic operators must, with clarity and precision, be able to find out about registrations or applications for registration made by their current or potential competitors and thus to receive relevant information about the rights of third parties. *477 52 If the users of that register are to be able to determine the precise nature of a mark on the basis of its registration, its graphic representation in the register must be self-contained, easily accessible and intelligible. 53 Furthermore, in order to fulfil its role as a registered trade mark a sign must always be perceived unambiguously and in the same way so that the mark is guaranteed as an indication of origin. In the light of the duration of a mark's registration and the fact that, as the Directive provides, it can be renewed for varying periods, the representation must be durable. 54 Finally, the object of the representation is specifically to avoid any element of subjectivity in the process of identifying and perceiving the sign. Consequently, the means of graphic representation must be unequivocal and objective. 55 In the light of the foregoing observations, the answer to the first question must be that Art.2 of the Directive must be interpreted as meaning that a trade mark may consist of a sign which is not in itself capable of being perceived visually, provided that it can be represented graphically, particularly by means of images, lines or characters, and that the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective.

The second question

56 By its second question, the referring court seeks essentially to ascertain whether Art.2 of the Directive must be interpreted as meaning that, in respect of an olfactory sign such as that at issue in the main proceedings, the requirements of graphic representability are satisfied by a chemical

formula, by a description in written words, by the deposit of an odour sample or by a combination of those elements.

Observations submitted to the court 57 Mr Sieckmann advocates a broad interpretation of “ represented graphically” within the meaning of the Directive. In the systematic interpretation and practice of trade mark offices, “ represented graphically” should be understood as “ represented, or electronically represented or deposited in another way” . 58 As regards the representation of the odour by a chemical formula, the applicant in the main proceedings observes that, although the molecular formula, in this case C10H10O2, does not in any way show how the various atoms of those elements are joined together, the structural formula, in this case C6H5-CH = CHCOOCH3, makes it possible to distinguish clearly a pure chemical substance as such. In *478 addition, a pure chemical substance, in this case methyl cinnamate, can be distinguished by its chemical name. 59 In respect of the representation of the odour by a description, Mr Sieckmann points out that olfactory marks already exist in the European Union and the United States and that, in the main proceedings, the olfactory sign which was the subject of the registration application is based on “ a balsamically fruity scent with a slight hint of cinnamon” , which corresponds to the classification of the perfume industry in the European Union. 60 As regards the representation of the mark to be protected by the deposit of a sample of it, Mr Sieckmann claims, as he explained in his registration application, that that mark may be obtained from local laboratory suppliers or from manufacturers and distributors of fine organic chemicals. 61 On the subject of a combination of the surrogate reproductions of that mark, he proposes, in respect of the application to register an olfactory mark on the basis of a pure chemical substance, as in the main proceedings, that differentiation be effected by means of the reproduction of the exact chemical name, which would appear beneath a contact address at which the odour could be obtained, supplemented where appropriate by the structural chemical formula of that odour, and by means of a deposit, for example, at the trade marks office carrying out examinations, in combination, where appropriate, with its description in words. 62 The Austrian and UK Governments and the Commission submit that, at the present stage of scientific knowledge, the uniform graphic representation of odours poses considerable problems. 63 In their submissions, the mere indication of the chemical formula as the graphic representation of an odour does not make it possible to identify the odour with certainty, because of different factors which influence the manner in which it can actually be perceived, such as concentration, quantity, temperature or the substance bearing the odour. Furthermore, those elements preclude the possibility of representing odours by means of olfactory samples. 64 The UK Government contends, in particular, that the chemical formula does not represent the odour of the chemical itself. Upon reading a chemical formula few people will understand what product it represents and, even if they do, they may well not understand what the product smells like. Furthermore, identifying the nature of the sign from a number of chemical formulae would cast an undue burden on those consulting the register. *479 65 As to the possibility of describing an odour in words, the Commission submits that such a description is imbued with subjectivity and can be interpreted in a subjective way, that is, differently by different people. 66 The UK Government considers that it is possible that a description in words of an odour could graphically represent it, for the purposes of Art.2 of the Directive. The circumstances in which such a representation would be acceptable are likely to be rare, mainly because it would be difficult to make such a description sufficiently clear and precise properly to represent the sign in question. 67 As regards the deposit of an odour sample, the Austrian Government and the Commission submit that an odour changes over time because of volatilisation or other phenomena and that a deposit can therefore not produce a lasting olfactory impression capable of constituting a graphic representation. 68 The UK Government states further that to allow such a form of representation in the trade mark registers of Member States and the Office for Harmonisation in the Internal Market (Trade Marks and Designs) would require considerable changes to those registers and to the systems of registration in Member States and at the Office and, as a result, the accessibility embodied by the existing system of public registers would be diminished.

Findings of the court

69 As regards a chemical formula, as the UK Government has rightly noted, few people would recognise in such a formula the odour in question. Such a formula is not sufficiently intelligible. In addition, as that Government and the Commission stated, a chemical formula does not represent the odour of a substance, but the substance as such, and nor is it sufficiently clear and precise. It is therefore not a representation for the purposes of Art.2 of the Directive. 70 In respect of the description of an odour, although it is graphic, it is not sufficiently clear, precise and objective. 71 As to the deposit of an odour sample, it does not constitute a graphic representation for the purposes of Art.2 of the Directive. Moreover, an odour sample is not sufficiently stable or durable. 72 If, in respect of an olfactory sign, a chemical formula, a description in words or the deposit of an odour sample are not capable of satisfying, in themselves, the requirements of graphic representability, nor is a combination of those elements able to satisfy such requirements, in particular those relating to clarity and precision. *480 73 In the light of the foregoing considerations, the answer to the second question must be that, in respect of an olfactory sign, the requirements of graphic representability are not satisfied by a chemical formula, by a description in written words, by the deposit of an odour sample or by a combination of those elements.

Costs

74 The costs incurred by the Austrian and UK Governments and by the Commission, which have submitted observations to the court, are not recoverable. Since these proceedings are, for the parties to the main proceedings, a step in the action pending before the national court, the decision on costs is a matter for that court. On those grounds the court, in answer to the questions referred to it by the Bundespatentgericht by order of 14 April 2000, hereby rules:

(1) Article 2 of Council Directive 89/104 of 21 December 1988 to approximate the laws of the Member States relating to trade marks must be interpreted as meaning that a trade mark may consist of a sign which is not in itself capable of being perceived visually, provided that it can be represented graphically, particularly by means of images, lines or characters, and that the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective. (2) In respect of an olfactory sign, the requirements of graphic representability are not satisfied by a chemical formula, by a description in written words, by the deposit of an odour sample or by a combination of those elements.

Shield Mark BV v Joost Kist H.O.D.N. Memex (Case C-283/01)

European Court of Justice (Sixth Chamber) 27 November 2003

[2004] E.T.M.R. 33

Judges Skouris( President), Cunha Rodrigues, Puissochet, Schnintgen, Macken: 27 November 20031

Device marks; EC law; Graphic representation; Infringement; Music; References to European Court; Registrability; Sound marks; Trade marks; Unfair competition H1 Trade marks— Word and device marks intended to protect the sound of the tune “ Für Elise” and the crowing of a cock— Action for trade mark infringement and unfair competition— Whether sounds infringe registration of word and device marks— Whether marks validly registered— Relief granted for unfair competition but dismissed for trade mark infringement— Appeal— Reference to European Court of Justice— Whether sounds can be registered as trade marks— Whether sounds can be graphically represented for trade mark registration purposes— Sufficiency of representation in form of musical stave, description of sound in words, musical notes, onomatopoeia— Ruling.

H2 Shield Mark claimed ownership of 14 trade marks which, it maintained, gave it protection of two sounds: the first nine notes of the Beethoven piano study known as “ Für Elise” and the

crowing of a cock. The tune and the cock crow were both used by Shield Mark and were identified with it. The melody was heard in its radio advertising and when news-sheets that it published were removed from stands in bookshops and newspaper kiosks, while the cock's crow sounded when software that it produced was started up. Both Shield Mark and Kist provided advice and services in the fields of intellectual property and marketing. H3 Kist commenced an advertising campaign in January 1995. In this campaign, he used the first nine notes of “ Für Elise” , employing that tune on his telephone switchboard. The same tune was played when magazines published by Kist were picked up from displays in bookstores or kiosks. Kist also offered for sale a computer program that played the sound of a crowing cock when it was started. Shield Mark sued Kist for trade mark infringement and unfair competition, seeking damages and injunctive relief. Kist denied infringement and unfair competition, maintaining that Shield Mark's trade marks did not confer a monopoly right in respect of sounds alone.

*468 H4 The Court of Appeal of The Hague granted an injunction on the ground of unfair competition but dismissed all claims based upon trade mark infringement. In its decision it concluded that (i) Benelux law did not provide for the registration of trade marks in respect of sounds; (ii) the protection conferred upon word marks and device marks did not extend to the making of sounds that corresponded to those marks; (iii) given the proximity of commercial activity between Shield Mark and Kist, the use by Kist of the “ Für Elise” motif and the crowing cock for the purpose of marketing his goods and services was nonetheless likely to cause confusion and would be restrained. Shield Mark appealed to the Hoge Raad der Nederlanden (Dutch Supreme Court), which referred to the European Court of Justice the following questions for a preliminary ruling: H5 1(a) Must Art.2 of the Directive be interpreted in such a manner that it opposes the acceptance of sounds or tunes as trade marks? H6 (b) If question 1(a) is answered in the negative, does the system created by the Directive imply that sounds or tunes have to be regarded as trade marks? H7 2(a) If question 1(a) is answered in the negative, what demands does the Directive set, with regard to sound marks, of the capability of graphic representation of the sign as mentioned in Art.2 and, in connection therewith, of the manner in which such trade mark would have to be registered? H8 (b) more specifically, are the requirements referred to in (a) above satisfied if the sound or tune is registered in the form of respectively: • — musical notation; • — a description in words, in the form of an onomatopoeia; • — a description in words in a different form; • — a graphic representation, e.g. a spectrogram or sonogram; • — a sound recording medium submitted together with the application form; • — a digital recording that may be listened to via the internet; • — a combination of these possibilities; • — another means and, if so, which? H9 The Advocate General in his opinion stated that Member States cannot preclude sound marks from registration a priori. However, they must meet the graphical representation requirements of being clear, accurate, complete as such, easily accessible, comprehensive, durable and represented in an objective manner. While it was for Member States to determine whether the forms of representation met these requirements, generally notes on a stave did meet them but the other forms in which Shield Mark's sounds had been represented did not. H10 Held, by the European Court of Justice, that the questions referred by the Hoge Raad der Nederlanden should be answered as follows: H11 1. Sound marks may be registered as trade marks under Art.2 of Directive 89/104 as long as they are capable of distinguishing the goods or services from one undertaking from those of other undertakings and of being graphically represented. They are not by their nature incapable of distinguishing between the goods of different undertakings and, because they are not precluded from registration under Art.2, Member States cannot preclude them from registration as a matter of principle.

*469 H12 2. A trade mark can consist of a sign that is not capable of being perceived visually if the sign can be represented graphically, particularly by means of images, lines or characters and if

the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective. H13 3. In order to obtain registration of a sound, an applicant must state in his application that he is applying for a sound mark. H14 4. It is for national courts to determine whether the marks submitted to them satisfy these criteria. However, the Court is prepared to offer guidance on the sufficiency of the representations in this case. H15 5. The graphical representation criteria are met when the sign is represented by a stave divided into measures and showing, in particular, a clef, musical notes and rests whose form indicates their relative value and, where necessary, accidentals. H16 6. The graphical representation criteria are not satisfied by a description in written language such as an indication that the sign is made up of the melody of a particular musical work ( e.g. “ the first nine notes of Für Elise” ), an indication that it is the cry of an animal ( e.g. “ a cockcrow” ), a simple onomatopoeia ( e.g. “ kukelekuuuuu” ) or a sequence of musical notes ( e.g. “ E, D#, E, D#, E, B, D, C, A” ) without more. H17 7. No guidance would be provided as to whether a sonogram, a sound recording, a digital recording or a combination of those methods were adequate means of graphically representing a sign, these being hypothetical questions in that Shield Mark had not applied for registrations of signs represented in those forms.

Court's response

51 As a preliminary observation, it is to be remembered that, in the context of the cooperation between the Court of Justice and the national courts provided for by Art.234 EC, it is solely for the national court before which the dispute has been brought, and which must assume responsibility for the subsequent judicial decision, to determine in the light of the particular circumstances of the case both the need for a preliminary ruling in order to enable it to deliver judgment and the relevance of the questions which it submits to the Court. Consequently, where the questions submitted by the national court concern the interpretation of Community law, the Court of Justice is, in principle, bound to give a ruling (see, inter alia, Case C-415/93 Bosman [1995] E.C.R. I-4921, para.[59]). *477

52 Nevertheless, the Court has taken the view that, in order to determine whether it has jurisdiction, it should examine the conditions in which the case was referred to it by the national court. The spirit of cooperation which must prevail in the preliminary-ruling procedure requires the national court, for its part, to have regard to the function entrusted to the Court of Justice, which is to assist in the administration of justice in the Member States and not to deliver advisory opinions on general or hypothetical questions (see, inter alia, Bosman, cited above, para.[60]). 53 The Court may therefore decline to rule on a question referred by a national court for a preliminary ruling where, inter alia, the problem is hypothetical (see, inter alia, Case C-111/01 Gantner Electronic [2003] E.C.R. I-4207 para.[36]). 54 In the present case, Shield Mark did not file an application for registration in the form of a sonogram, a sound recording, a digital recording or a combination of those methods, so that, in the absence of relevance, an answer cannot be provided to the question in so far as it relates to those modes of representation. 55 As regards, in the first place, the requirements to be satisfied by any graphical representation, the Court held in Sieckmann, cited above, which concerned olfactory signs, that Art.2 of the Directive must be interpreted as meaning that a trade mark may consist of a sign which is not in itself capable of being perceived visually, provided that it can be represented graphically, particularly by means of images, lines or characters, and that its representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective. 56 Those conditions are also binding on sound signs, which, like olfactory signs, are not in themselves capable of visual perception. 57 As regards, in the second place, acceptable forms of graphical representation, although it is for the national court to determine, in each specific case before it, whether the sign was capable of constituting a trade mark and could therefore be validly registered, the Court is none the less competent to provide guidance as to whether a representation by means of musical notes or a representation using the written language constitutes a graphical representation of a sound sign for the purposes of Art.2 of the Directive.

58 It must be emphasised at the outset that a sign cannot be registered as a sound mark where the applicant has failed to state in the application for registration that the sign in question must be understood as being a sound sign. In such a case, the competent trade mark registration authority, and the public, in particular traders, are entitled to consider that it is a word mark or a figurative mark as represented graphically in the application for registration. 59 As regards, first, the representation of a sound sign by a description using the written language, it cannot be precluded a priori that such a mode of graphical representation satisfies the requirements defined at para.[55] of this judgment. However, in the case of signs such as those at issue in the main proceedings, a graphical representation such as the first nine notes of Für Elise or a cockcrow at the very least lacks precision and clarity and therefore does not make it possible to determine the scope of the protection sought. Accordingly, it cannot constitute a graphical representation of that sign for the purposes of Art.2 of the Directive. 60 As regards, next, an onomatopoeia, it must be held that there is a lack of consistency between the onomatopoeia itself, as pronounced, and the actual sound *478 or noise, or the sequence of actual sounds or noises, which it purports to imitate phonetically. Thus, where a sound sign is represented graphically by a simple onomatopoeia, it is not possible for the competent authorities and the public, in particular traders, to determine whether the protected sign is the onomatopoeia itself, as pronounced, or the actual sound or noise. Furthermore, an onomatopoeia may be perceived differently, depending on the individual, or from one Member State to another. That is so in the case of the Dutch onomatopoeia Kukelekuuuuu, which seeks to transcribe a cockcrow, and which is very different from the corresponding onomatopoeia in the other languages used in the Benelux Member States. Consequently, a simple onomatopoeia cannot without more constitute a graphical representation of the sound or noise of which it purports to be the phonetic description. 61 As regards, last, musical notes, which are a common method of representing sounds, a sequence of notes without more, such as E, D#, E, D#, E, B, D, C, A, does not constitute a graphical representation for the purposes of Art.2 of the Directive either. Such a description, which is neither clear, nor precise nor self-contained, does not make it possible, in particular, to determine the pitch and the duration of the sounds forming the melody in respect of which registration is sought and which constitute essential parameters for the purposes of knowing the melody and, accordingly, of defining the trade mark itself. 62 On the other hand, a stave divided into bars and showing, in particular, a clef (a treble clef, bass clef or alto or tenor clef), musical notes and rests whose form (for the notes: semibreve, minim, crotchet, quaver, semiquaver, etc.; for the rests: semibreve rest, minim rest, crotchet rest, quaver rest, etc.) indicates the relative value and, where appropriate, accidentals (sharp, flat, natural)-all of this notation determining the pitch and duration of the sounds-may constitute a faithful representation of the sequence of sounds forming the melody in respect of which registration is sought. This mode of graphical representation of the sounds meets the requirements of the case-law of the Court that such representation must be clear, precise, self-contained, easily accessible, intelligible, durable and objective. 63 Even if such a representation is not immediately intelligible, the fact remains that it may be easily intelligible, thus allowing the competent authorities and the public, in particular traders, to know precisely the sign whose registration as a trade mark is sought. 64 The answer to the second question must be that: • — Article 2 of the Directive must be interpreted as meaning that a trade mark may consist of a sign which is not in itself capable of being perceived visually, provided that it can be represented graphically, particularly by means of images, lines or characters, and that its representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective; • — in the case of a sound sign, those requirements are not satisfied when the sign is represented graphically by means of a description using the written language, such as an indication that the sign consists of the notes going to make up a musical work, or the indication that it is the cry of an animal, or by means of a simple onomatopoeia, without more, or by means of a sequence of musical notes, without more. On the other hand, those *479 requirements are satisfied where the sign is represented by a stave divided into measures and showing, in particular, a clef, musical notes and rests whose form indicates the relative value and, where necessary, accidentals.

Costs

65 The costs incurred by the Netherlands, French, Italian, Austrian and UK Governments and by the Commission, which have submitted observations to the Court, are not recoverable. Since these proceedings are, for the parties to the main proceedings, a step in the action pending before the national court, the decision on costs is a matter for that court. On those grounds the Court (Sixth Chamber), in answer to the questions referred to it by the Hoge Raad der Nederlanden by judgment of 13 July 2001, hereby rules: 1. Article 2 of First Council Directive 89/104 of 21 December 1988 to approximate the laws of the Member States relating to trade marks is to be interpreted as meaning that sound signs must be capable of being regarded as trade marks provided that they are capable of distinguishing the goods or services of one undertaking from those of other undertakings and are capable of being represented graphically. 2. Article 2 of Directive 89/104 must be interpreted as meaning that a trade mark may consist of a sign which is not in itself capable of being perceived visually, provided that it can be represented graphically, particularly by means of images, lines or characters, and that its representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective.

In the case of a sound sign, those requirements are not satisfied when the sign is represented graphically by means of a description using the written language, such as an indication that the sign consists of the notes going to make up a musical work, or the indication that it is the cry of an animal, or by means of a simple onomatopoeia, without more, or by means of a sequence of musical notes, without more. On the other hand, those requirements are satisfied where the sign is represented by a stave divided into measures and showing, in particular, a clef, musical notes and rests whose form indicates the relative value and, where necessary, accidentals.

Fieldturf Inc v Office for Harmonisation in the Internal Market (Case T– 216/02)

Court of First Instance (Fourth Chamber) 31 March 2004

[2004] E.T.M.R. 86

H. Legal ( President), V. Tiili and M. Vilaras, (Judges): 31 March 20041

Advertising slogans; Applications; Community trade marks; Distinctiveness H1 Community trade mark application— LOOKS LIKE GRASS … FEELS LIKE GRASS … PLAYS LIKE GRASS (Classes 27 and 37: synthetic surfacing for sports fields and the installation of that surfacing)— Application refused— Lack of distinctiveness— Appeal— Whether advertising slogans registrable— Criteria for assessing whether mark distinctive— Mark composed of commonplace statements— Whether mark had a rhetorical “ flourish” , poetic character or rhythm which would cause it to be distinctive— Application for both synthetic surfaces and their installation— Whether application would be refused for both sets of goods/services— Role of internet search— Appeal dismissed.

H2 The applicant applied to register the slogan LOOKS LIKE GRASS … FEELS LIKE GRASS … PLAYS LIKE GRASS as a Community trade mark in Classes 27 and 37 for synthetic surfacing for sports fields and the installation of that surfacing. The application was rejected on grounds of lack of distinctiveness by both the Examiner and the Board of Appeal. Fieldturf appealed to the Court of First Instance, arguing in particular that the mark was distinctive because it had a poetic character, a rhetorical flourish and its symmetrical three-part form create an emphatic sound. H3 Held, by the Court of First Instance, dismissing the appeal as unfounded: H4 1. According to settled case law, the Court of First Instance cannot issue directions to the Office for Harmonisation in the Internal Market. Accordingly the applicant's claim that the Court of First Instance should direct the Office to register the mark applied for had to be rejected as inadmissible. *1147 H5 2. Signs which are devoid of distinctive character under Art.7(1)(b) are those which are incapable of performing the essential function of a trade mark, i.e. that of identifying the origin of the goods or services, thus enabling the consumer who acquired them to repeat the experience,

if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of subsequent acquisition. H6 3. Marks caught under Art.7(1)(b) include in particular those which, from the point of view of the relevant public, are commonly used, in trade, for the presentation of the goods or services concerned or in connection with which there exists, at the very least, concrete evidence justifying the conclusion that they are capable of being used in that manner. H7 4. In principle, signs which are used as advertising slogans, indications or quality or incitements to purchase the goods or services covered by that mark are not excluded from registration as trade marks. However, such signs which fulfil functions other than that of a trade mark will only be considered distinctive under Art.7(1)(b) if they may be perceived immediately as an indication of the commercial origin of the goods or services in question, so as to enable the relevant public to distinguish, without any possibility of confusion, the goods or services of the owner of the mark from those of a different commercial origin. H8 5. The distinctiveness of a sign can only be assessed in relation to (i) the goods or services for which registration has been requested and (ii) the perception that the public has of it. H9 6. In this case, the relevant public included final consumers who might use the product for their personal needs, as well as sports clubs, sports federations and organisers of sporting events. Since the mark applied for was in English, the relevant public was an English-speaking one. H10 7. The Board of Appeal had been right to find that the mark did not contain any element that endowed it with distinctive character. It was merely a commonplace concatenation of three unambiguous statements concerning the properties of the goods. It directly informed the relevant public that the goods covered by the trade mark application had qualities similar to natural grass. The expression PLAYS LIKE GRASS did not in the slightest suggest the unusual meaning of “ something plays in the way grass plays” . H11 8. The mark had no particular rhetorical “ flourish” , poetic character or rhythm such as to confer distinctiveness upon it. Even if it did produce such effects, they would be very diffuse and thus would not induce the relevant consumer to see in the mark anything other than a promotional formula applicable to synthetic surfaces in general, and not therefore capable of designating the origin of those goods. H12 9. While it could not be ruled out that with regard to the services for the installation of synthetic surfaces the mark may have been distinctive, the applicant had applied for the mark without distinction between the synthetic surface and the installation of the synthetic surface and without specifying that its application should be restricted for services alone if the application for goods was rejected. This was comparable to the situation where an applicant applies for a whole class under the Nice Agreement without restriction. In both situations, the goods and the services were considered to be inseparably linked because the purpose of the service was to install the goods in question. *1148 H13 10. The Board of Appeal had shown the required standard of proof that the mark applied for was commonly used by finding essentially that the mark applied for informed consumers in plain language of the nature and advantages or qualities of the goods and services concerned. H14 11. While the internet search relied on by the Board of Appeal had not been communicated to the applicant, this did not mean that the decision should be annulled under Art.73 of Regulation 40/94 because the decision was reached based on evidence independent of the internet search which was known to the applicant. The internet search merely confirmed the accuracy of the finding.