Case C-64/02 P

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)

v

Erpo Möbelwerk GmbH

(Appeal – Community trade mark – Phrase DAS PRINZIP DER BEQUEMLICHKEIT – Absolute ground for refusal – Distinctive character – Article 7(1)(b) of Regulation (EC) No 40/94)

Summary of the Judgment

1. Community trade mark – Definition and acquisition of the Community trade mark – Absolute grounds for refusal – Trade marks devoid of any distinctive character – Trade marks consisting of advertising slogans – Distinctive character – Application of specific assessment criteria – Not permissible

(Council Regulation No 40/94, Art. 7(1)(b))

2. Community trade mark – Definition and acquisition of the Community trade mark – Absolute grounds for refusal – Trade marks devoid of any distinctive character – Limitation of the ground for refusal referred to in Article 7(1)(b) of Regulation No 40/94 to trade marks to which the ground for refusal referred to in subparagraph (d) of that provision applies – Not permissible

(Council Regulation No 40/94, Art. 7(1)(b) and (d))

1. In order for it to be assessed as having distinctiveness for the purpose of Article 7(1)(b) of Regulation No 40/94 on the Community trade mark, every trade mark, of whatever category, must be capable of identifying the product as originating from a particular undertaking, and thus distinguishing it from those of other undertakings. Although the criteria for assessing distinctiveness are the same for the various categories of marks, it may become apparent, in applying those criteria, that the relevant public’s perception is not necessarily the same for each of those categories and that, therefore, it may prove more difficult to establish distinctiveness for some categories of mark than for others.

However, difficulties in establishing distinctiveness which may be associated with certain categories of trade marks because of their very nature, such as those consisting of advertising slogans – difficulties which it is legitimate to take into account – do not justify laying down specific criteria supplementing or derogating from the criterion of distinctiveness as interpreted in the foregoing. A refusal to register imposing a different and stricter criterion for assessing the distinctiveness of trade marks consisting of advertising slogans, such as ‘imaginativeness’ or even ‘conceptual tension which would create surprise and so make a striking impression’, is therefore incorrect.

(see paras 33-34, 36)

2. Each of the grounds for refusal listed in Article 7(1) of Regulation No 40/94 on the Community trade mark is independent of the others and calls for separate examination. Therefore, it is not appropriate to limit the scope of Article 7(1)(b), relating to trade marks which are devoid of any distinctive character, to trade marks for which registration is refused on the basis of Article 7(1)(d) of that regulation, which relates to trade marks which consist of elements which have become customary in the current language or in the practices of the trade, by reason of the fact that they are commonly used in business communications and, in particular, in advertising.

To hold that a trade mark is not devoid of distinctive character unless it is demonstrated that it is commonly used in business communications and, in particular, in advertising, therefore constitutes an error of law since such a criterion differs from the one laid down by Article 7(1)(b).

(see paras 39-40, 46, 48)

JUDGMENT OF THE COURT (Second Chamber) 21 October 2004 (1)

(Appeal – Community trade mark – Phrase DAS PRINZIP DER BEQUEMLICHKEIT – Absolute ground for refusal – Distinctive character – Article 7(1)(b) of Regulation (EC) No 40/94)

In Case C-64/02 P, APPEAL under Article 49 of the Statute of the Court of Justice,brought on 27 February 2002,

appellant, supported by

intervener,

the other party to the proceedings being:

defendant at first instance,

THE COURT (Second Chamber),,

composed of C.W.A. Timmermans (Rapporteur), President of the Chamber, C. Gulmann, J.-P. Puissochet, R. Schintgen and J.N. Cunha Rodrigues, Judges,

Advocate General: M. Poiares Maduro,

after considering the observations submitted on behalf of the parties,

having regard to the written procedure and further to the hearing on 5 May 2004,

after hearing the Opinion of the Advocate General at the sitting on 17 June 2004,

gives the following

‘1. The following shall not be registered:

...

...

3. Paragraph 1(b), (c) and (d) shall not apply if the trade mark has become distinctive in relation to the goods or services for which registration is requested in consequence of the use which has been made of it.’

‘A Community trade mark shall not entitle the proprietor to prohibit a third party from using in the course of trade:

...

...

‘43. Furthermore, the Board of Appeal again noted, in paragraph 30 of the contested decision, that DAS PRINZIP DER BEQUEMLICHKEIT was characterised by the lack of any additional element of imagination. In addition, the Office submitted in its response that, in order to be able to serve as marks, slogans must possess an additional element ... of originality and that the term at issue had no such originality.

44. In that regard, it is clear from the case‑law of the Court of First Instance that lack of distinctiveness cannot be found because of lack of imagination or of an additional element of originality (Case T‑135/99

46. The dismissal, on the basis of Article 7(1)(b) of Regulation No 40/94, of the appeal brought before the Board of Appeal would have been justified only if it had been demonstrated that the combination of the words das Prinzip der ... (the principle of ...) alone with a term designating a characteristic of the goods or services concerned is commonly used in business communications and, in particular, in advertising. The contested decision does not contain any finding to that effect and neither in its written pleadings nor at the hearing has the Office asserted that such a usage exists.’

On those grounds, the Court hereby:

Signatures.