Deutsche SiSi-Werke GmbH & Co. Betriebs KG v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM).

• Jurisdiction: European Union
• Celex Number: 62004CJ0173
• ECLI: ECLI:EU:C:2006:20
• Court: Court of Justice (European Union)
• Docket Number: C-173/04
• Date: 12 January 2006
• Procedure Type: Recurso de anulación

Case C-173/04 P

Deutsche SiSi-Werke GmbH & Co. Betriebs KG

v

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

(Appeal – Community trade mark – Article 7(1)(b) of Regulation (EC) No 40/94 – Three-dimensional shapes of stand-up pouches for fruit drinks and fruit juices – Absolute ground for refusal – Distinctive character)

Summary of the Judgment

1. Community trade mark – Definition and acquisition of the Community trade mark – Absolute grounds for refusal – Marks devoid of any distinctive character

(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 – Separate examination of the different grounds for refusal

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

1. With regard to three-dimensional trade marks consisting of the packaging of goods, such as liquids, which are packaged in trade for reasons linked to the very nature of the product, only a mark which departs significantly from the norm or customs of the sector and thereby fulfils its essential function of indicating origin is not devoid of any distinctive character for the purposes of Article 7(1)(b) of Regulation No 40/94 on the Community trade mark.

In that regard, there is no reason systematically to restrict the sector for the purposes of comparison to the actual goods in respect of which registration is sought. It cannot be excluded that the consumers of a given product may in certain cases be influenced, in their perception of the trade mark which the product bears, by the marketing methods used for other goods which they also use. Thus, depending on the nature of the goods in question and the trade mark applied for, it may be necessary, for the purposes of assessing whether or not the trade mark is devoid of any distinctive character, to take into consideration a wider sector.

Restriction of the sector in which the comparison is to be made falls within the appraisal of the facts.

(see paras 29, 31-32, 35)

2. Each of the grounds for refusal to register listed in Article 7(1) of Regulation No 40/94 on the Community trade mark is independent of the others and requires separate examination. Moreover, it is appropriate to interpret those grounds for refusal in the light of the general interest which underlies each of them. The general interest to be taken into consideration when examining each of those grounds for refusal may or even must reflect different considerations according to the ground for refusal in question.

In that regard, the concept of general interest underlying Article 7(1)(b) of that regulation is indissociable from the essential function of a trade mark, which 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 the product or service from others which have another origin.

By contrast, the criterion according to which trade marks which are capable of being commonly used, in trade, for the presentation of the goods or services in question may not be registered is relevant in the context of Article 7(1)(c) of Regulation No 40/94 but it is not the yardstick by which Article 7(1)(b) must be interpreted. However, the finding that the trade mark sought is already commonly used in the Community for a category of goods or services and that, therefore, it is not sufficiently unusual for the average consumer to perceive it, per se, as an indication of the specific commercial origin of a product within that category is relevant in the context of Article 7(1)(b).

(see paras 59-61, 63, 66-67)

JUDGMENT OF THE COURT (First Chamber)

12 January 2006(*)

(Appeal – Community trade mark – Article 7(1)(b) of Regulation (EC) No 40/94 – Three-dimensional shapes of stand-up pouches for fruit drinks and fruit juices – Absolute ground for refusal – Distinctive character)

In Case C-173/04 P,

APPEAL under Article 56 of the Statute of the Court of Justice, brought on 6 April 2004,

Deutsche SiSi-Werke GmbH & Co. Betriebs KG, established in Eppelheim (Germany), represented by H. Eichmann, G. Barth, U. Blumenröder, C. Niklas‑Falter, M. Kinkeldey, K. Brandt, A. Franke, U. Stephani, B. Allekotte, E. Pfrang, K. Lochner and B. Ertle, Rechtsanwälte,

appellant,

the other party to the proceedings being:

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by G. Schneider, acting as Agent,

defendant at first instance,

THE COURT (First Chamber),

composed of P. Jann, President of the Chamber, K. Schiemann, K. Lenaerts, E. Juhász and M. Ilešič (Rapporteur), Judges,

Advocate General: D. Ruiz-Jarabo Colomer,

Registrar: K.H. Sztranc, Administrator,

having regard to the written procedure and further to the hearing on 16 June 2005,

after hearing the Opinion of the Advocate General at the sitting on 14 July 2005,

gives the following

Judgment

1 By its appeal, Deutsche SiSi-Werke GmbH & Co. Betriebs KG seeks to have set aside the judgment of the Court of First Instance of the European Communities of 28 January 2004 in Joined Cases T‑146/02 to T‑153/02 Deutsche SiSi-Werke v OHIM(Flat-bottomed pouches) [2004] ECR II-447 (‘the judgment under appeal’), by which the Court of First Instance dismissed its actions against the decisions of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 28 February 2002 (Cases R 719/1999‑2 to R 724/1999‑2, R 747/1999‑2 and R 748/1999‑2) refusing registration of eight three-dimensional marks consisting of different stand-up pouches for drinks (‘the contested decisions’).

Legal context

2 Article 7(1)(b) and (c) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), states:

‘The following shall not be registered:

…

(b) trade marks which are devoid of any distinctive character;

(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service’.

Background to the dispute

3 On 8 July 1997 the appellant filed eight applications for registration of three‑dimensional Community trade marks at OHIM under Regulation No 40/94.

4 Those marks consist of shapes of various stand-up pouches for packaging drinks. The pouches have a convex form, are wider at the bottom and, viewed straight on, look, depending on the application concerned, somewhat like an elongated triangle or an oval with, in some cases, concave sides.

5 The goods in respect of which registration of the trade marks was applied for, taking into account the amendments made by the appellant in that regard, are ‘fruit drinks and fruit juices’, in Class 32 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended.

6 By decisions of 24 and 27 September 1999, the OHIM examiner refused the eight registrations on the ground that the trade marks applied for were devoid of any distinctive character.

7 By the contested decisions, the Second Board of Appeal of OHIM confirmed the decisions of the examiner. It took the view, in essence, that consumers would not perceive the stand-up pouches as an indication of commercial origin but solely as a form of packaging. It added that, in the interests of competitors, packaging manufacturers and beverage producers, there could be no monopoly in this type of packaging.

The procedure before the Court of First Instance and the judgment under appeal

8 The appellant brought actions before the Court of First Instance seeking annulment of the contested decisions.

9 By the judgment under appeal, the Court of First Instance held that the Second Board of Appeal of OHIM had correctly found that the trade marks applied for were devoid of any distinctive character with regard to fruit drinks and fruit juices.

10 In paragraphs 39 to 43 of the judgment under appeal, the Court of First Instance did not accept the appellant’s argument that packaging fruit drinks and fruit juices in stand-up pouches is, in itself, unusual.

11 Since the appellant then maintained that the representations claimed have design features which are not merely commonplace or functional attributes, the Court of First Instance, after having carried out, in paragraphs 44 to 51 of the judgment under appeal, an examination of each of the individual features in turn, considered, in paragraph 52 of that judgment, the overall impression produced by the appearance of the pouches concerned and concluded that those representations were devoid of any distinctive character.

12 Accordingly, after having rejected the...