C-53/01

OPINION OF MR RUIZ-JARABO — JOINED CASES C-53/01 TO C-55/01

OPINION OF ADVOCATE GENERAL RUIZ-JARABO C O L O M E R delivered on 24 October 2002 1

1. This reference for a preliminary ruling Facts and the main proceedings concerns general aspects of the method of assessing whether three-dimensional shape- of-product marks are distinctive. The recent judgment of 18 June 2002 in Philips 2 resolves most of the doubts enter- tained by the national court. Case C-53/01

2. Linde AG, a company established in Wiesbaden (Germany), applied for regis- tration as a three-dimensional mark of the representation of a vehicle of the type 'motorised trucks and other mobile works vehicles, particularly fork-lift trucks'.

(German Trade Mark Law), 4and gave the function to it, as long as it remains in its following reasons (as they appear in the familiar context. The shape of the product order for reference): does not go beyond the parameters of modern industrial design. In its non-tech- nical aspects, it is not so different from standard shapes as to cause the trade to see it not merely as a variation of a familiar shape, but as the distinctive sign of an undertaking. In the motor vehicle sector in particular — including the commercial 'It is not necessary to decide whether the vehicle sector — the tendency to use "soft- sign for which registration has been applied line" contours has been standard for years, [for], and which consists entirely in a so that this sort of design gives no indi- realistic representation of the goods in cation as to a specific producer. The trade question from different angles, is a three- mark applied for differs too little from the dimensional image eligible for registration usual shapes. It displays no supplementary as a trade mark within the meaning of imaginative element. The trade does not Paragraph 3 of the Markengesetz or, regard it as a reference to the undertaking rather, falls within Paragraph 3(2) of the of origin.' Markengesetz [equivalent to Article 3(1 )(e) of the Trade Mark Directive].

The trade mark applied for is in any event Case C-S4/01 devoid of any distinctive character in the terms of Paragraph 8(2)(1) of the Mar- kengesetz [Article 3(l)(b) of the Directive]. To determine whether the trade mark has distinctive character in the present case, it is necessary, as in the case of all other signs capable of constituting trade marks, to 3. Winward Industries Inc., established in establish whether and to what extent they Taipei (Taiwan), applied for registration of may serve, in trade, to indicate the under- a torch as a three-dimensional mark. taking from which the products in question originate. This is not the case here. The trade does not see in the representation of the product anything more than the prod- uct itself and attributes no distinctive

'It can be assumed that the design is capable of being a trade mark in the abstract under Paragraph 3(1) of the Mar- kengesetz [equivalent to Article 2 of the Directive]. The question whether there are grounds for refusal under Paragraph Case C-55/01 3(2)(1) or (2) of the Markengesetz [equiv- alent to the first two indents of Article 3(1 )(e) of the Directive] can be left aside. Concerns might arise over the fact 5. Rado Uhren AG (Rado Watch Co. Ltd) that few possibilities would be left open to (Rado Montres SA), established in Lengnau competitors for variations on the design of bei Biel (Switzerland), applied for regis- torches. No definitive decision is required tration of a three-dimensional mark con- since the trade mark applied for lacks the sisting of the graphic representation of a distinctive character required by Paragraph wristwatch which it already owned as an 8(2)(1) of the Markengesetz. It is a typical international mark. torch shape, which, notwithstanding a certain elegance, remains commonplace in the market. A consumer in this sector will not see in the shape of the product any indication that it originates from a par- ticular undertaking. In view of the minimal The trade mark office of the Deutsches differences compared to competing prod- Patentamt refused registration on the ucts, even an observant consumer will ground that the sign was devoid of any hardly be in a position to identify a distinctive character and that there was a particular manufacturer from memory. need to preserve availability. I - 3166

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'It should be assumed that the subject of the Protection can only be conferred where an application to extend protection is the original design that is indicative of origin specific three-dimensional shape of this can overcome the need to preserve the watch face with or without covered time availability of the elementary shape of the display and cut-away strap and not a form product and its lack of distinctive char- of blanket protection for individual fea- acter. A fairly strict test must be applied for tures of watch shapes of otherwise differing the purposes of establishing the originality designs. of the product or its parts because they are themselves the most important means of description and, if they are monopolised, there is a risk that competitors will be impeded in the design of their products and it is at least conceivable that there is a need to preserve availability. The degree of originality required for registration of a trade mark also depends on the particular On that interpretation of the application to conditions in the product sector in ques- extend protection there are no objections tion. regarding the abstract distinctive character of the internationally registered trade mark under Paragraph 3(1) of the Markengesetz. Nor are there apparent grounds for refus- ing protection under Paragraph 3(2) of the Markengesetz.

On the market in wristwatches there is traditionally an extraordinary variety of shapes and designs. There is therefore a particular need to keep this sector free from trade mark protection which unnecessarily restricts freedom of design so that, in the However the internationally registered future, competitors are still able to make trade mark is not capable of protection full use of the shapes available in any new because it is devoid of distinctive character combination. The internationally registered

Procedure before the Court of Justice 6. The applicants in the three sets of proceedings all lodged appeals for infringe- ment of the law before the Bundesgerichts- hof (Federal Court of Justice), which 7. The requests for a preliminary ruling decided to stay proceedings and refer for were received at the Court Registry on a preliminary ruling the following questions 8 February 2001. The applicants in the on the interpretation of Article 3(1)(b), (c) various actions before the national court and (e) of the Trade Mark Directive: appeared before the Court, as did the United Kingdom and Austrian Govern- ments and the Commission. By order of the President of the Court of 15 March 2001, the cases were joined for the pur- poses of the written procedure and the oral '(1) In determining whether a three-dimen- procedure. sional trade mark which depicts the shape of a product has distinctive character within the meaning of Article 3(1)(b) of the above Directive is there a stricter test for distinctive character than in the case of other forms of trade marks? Analysis of the questions referred

(2) In the case of three-dimensional trade The first question referred to the Court marks which depict the shape of the product, does Article 3(1 )(c) of the Directive have any significance inde- pendently of Article 3(1)(e)? If so, 8. By its first question, the Bundesgericht- when considering Article 3(1 )(c) — shof wishes to know whetherArticle 3(1)(b) I-3168

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of the Trade Mark Directive must be Directive contains other provisions, to interpreted as meaning that the assessment which I shall refer below, which deal with of distinctive character is stricter in the case the requirement that certain signs should of three-dimensional signs consisting of the not be the object of exclusive rights. shape of the product.

12. A separate issue is, as the Austrian and United Kingdom Governments have pointed out, how hard it is in practice for many product shapes to demonstrate suffi- 10. I share the parties' view. First, the cient distinctive character for the purposes Directive does not contain any provision of registration. suggesting that three-dimensional product shapes merit different — stricter — treat- ment when an assessment is made as to whether they possess actual distinctive character. 5However, there are public-in- terest reasons which militate in favour of applying different rules by reference to the First, the essential characteristics of those types of signs which may constitute trade signs must not result from the nature of the marks, which are, in accordance with the product itself or be attributable to the need non-exhaustive list in Article 2 of the to obtain a technical result or to give Directive, 'words, including personal substantial value to the product, otherwise names, designs, letters, numerals, the shape the sign will be caught by the absolute of goods or of their packaging'. The grounds for refusal in Article 3(1 )(e), as interpreted by the Court of Justice in 5 — Which is nor to be confused with 'capable of distinguishing' or potential distinctive diameter (Article 2 of the Directive) or acquired distinctive character (Article 3(3)). 6 paragraph 48 of the judjment in Philips.

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Philips. I shall refer to this issue below in The second question referred to the Court the analysis of the second question.

It is necessary to point out that such practical difficulties derive from the very nature of three-dimensional shapes and from the idiosyncrasies of consumers' habits rather than from what is alleged to be a stricter approach in the assessment of distinctive character. 15. The question before the Court of Jus- tice is whether account should be taken of the public interest in restricting the extent to which certain signs consisting of the shape of the product may be appropriated in order that they may be freely used by operators as a whole and, in particular, 13. In short, to my mind the answer to be under which provision it is necessary to given to the n a t i o n a l c o u r t is t h a t proceed. Article 3(1)(b) of the Trade Mark Directive is not to be interpreted as requiring a stricter test of distinctive character for a 7 — Which the referring court describes as 'the interest of the three-dimensional sign depicting the shape trade in having the shape of the product available for use' but which includes any consideration of public interest of the product than for the other types of which militates in favour of restricting registration of certain signs in order that they may be freely used by trade marks referred to in Article 2. operators as a whole.

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Once the answer to that question is known, preclude the acquisition of distinctiveness any doubts are dispelled as to the possibil- through use, which appears to it to be ity of 'remedying' the lack of distinctive unjustified. Such a view also relies on character by acquisition of distinctiveness subparagraph (e) being interpreted in such through use. That remedy is impossible in a way that the ground for refusal that it so far as the public interest in the avail- contains will cease to apply as soon as the ability of a sign is determined in the context sign displays any feature which is not of Article 3(1)(e); 8that is not the case if dictated by the product's nature, function t h a t d e t e r m i n a t i o n is m a d e u n d e r or substantial value. Article 3(1)(c).

9 — Case C-383/99 [2001] ECR I-6251 ('the Baby-dry judg- 8 — On account of Article 3(3), first sentence. See also) ment'). paragraph 75 of the Philips judgment. 10 — Joined Cases C-108/97 and C-109/97 [1999] ECR I-2779.

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protection afforded by a trade mark is freedom of choice in regard to the technical primarily to guarantee the trade mark as an solution they wished to adopt in order to indication of origin, 1 1acknowledged that incorporate such a function in their prod- when the various grounds for refusal are uct. 14 applied, other underlying general-interest considerations may be taken into account. 12 It is appropriate in each case to analyse the rationale for the refusal or nullity of registration.

In the sphere of three-dimensional shape- of-product signs, the importance of the interest in preserving availability was thus acknowledged.

11 — Paragraph 29. 12 — Paragraph 77. 14 — Paragraph 79. 13 — Paragraph 78. 15 — Paragraph 80.

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shape of the product result from the nature 26. The Court thus stated that underlying of the product or give the product substan- Article 3(1)(c) was a requirement that any tial value. assessment should be guided by the general interest in preserving the availability of certain signs.

23. For the remainder, the principles relat- ing to the need to preserve availability in the domain of Article 3(1)(c), as formulated 27. So no legislative provision requires in Windsurfing Chiemsee, continue to three-dimensional signs consisting of the apply. shape of the product to be treated differ- ently, which suggests that they are to remain subject to a multifaceted examin- ation of whether they are eligible to be registered as trade marks.

24. The Court stated in that instance that Article 3(1)(c) of the Directive pursues a general-interest aim which requires that descriptive signs or indications may be freely used by all, including as collective marks or as part of complex or graphic 28. First, they must satisfy the abstract marks. Article 3(1)(c) therefore prevents requirements of Article 2 of the Directive: such signs and indications from being they must be capable of being represented reserved to one undertaking alone because graphically and must have the capacity to they have been registered as trade marks. 16 have distinctive character.

The judgment in Philips, in not accepting the narrowest definition of this ground for refusal — which is the one adopted by the The assessment under Article 3(1 )(e) of the Bundesgerichtshof in its decision — con- Directive of the need to preserve availabil- firms the importance of the role of that ity does not preclude or prejudge a further ground. examination, where appropriate, which is also guided by the objective that availabil- ity should be preserved and which is carried out under Article 3(1)(c). Its nature is distinct: the present or future interest of other operators in using the sign as a descriptive indication has to be weighed against the relative need of the owner to use that type of trade mark in order to make known the trade origin. The fact that the mark claimed has acquired distinctiveness It cannot be denied that that interpretation through use may have an impact on the end means that many unadorned signs ('soft- result of this second assessment of the need line', according to the description in the to preserve availability — contrary to the decision of the Bundespatentgericht) will case of the first assessment. never be eligible for registration but in my view that consequence is not dispropor- tionate: the public interest should not have to tolerate even a slight risk that trade mark rights unduly encroach on the field of other exclusive rights which are limited in time, whilst there are in fact other effective ways in which manufacturers may indicate the 31.1 acknowledge that many three-dimen- origin of a product (addition of arbitrary sional shape-of-product signs will probably I - 3174

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(2) In assessing whether the essential characteristics of a three-dimensional sign consisting of the shape of the product result from the nature of the product itself, from the need to obtain a technical result or from the need to give substantial value to the product, it is necessary to take into account the general interest in preserving the availability of the sign concerned for operators as a whole. That assessment does not prevent the sign, if it is descriptive, from being subject to a further assessment of the need to preserve availability under Article 3(l)(c) of Directive 89/104. Only the result of the second assessment may be influenced by a finding that distinctiveness has been acquired through use in accordance with the first sentence of Article 3(3) of Directive 89/104.

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