C-218/01

OPINION OF MR RUIZ-JARABO — CASE C-218/01

OPINION OF ADVOCATE GENERAL RUIZ-JARABO COLOMER delivered on 14 January 2003 1

1. The Bundespatentgericht has referred to Background the Court three questions on the interpre- tation of Article 3(1)(b), (c) and (e) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks, 2vis-à-vis three-dimensional signs which consist of the shape of goods.

3. On 18 June 1998, Henkel KGaA ('Hen- kel'), a company which manufactures chemical products and whose registered office is in Düsseldorf, Germany, applied More specifically, the Bundespatentgericht for registration, in the appropriate national wishes to know whether, for the purposes register, of a packaging shape as a colour of the abovementioned provisions, packag- three-dimensional trade mark in respect of ing is to be equated with contents (first 'liquid wool detergent'. question). The Bundespatentgericht also seeks guidance on the test to be applied when assessing the distinctive character of such signs (second question), and, with regard to the assessment to be carried out for the purposes of registration, on whether any relevance should be attributed to the registration practices in other Member States.

4. The Trade Mark Department for Class 3 of the German Patent and Trade Mark Office (Deutsches Patent- und Markenamt) refused the application on the ground that the shape in question constituted a custom- 2. The replies to those questions can be ary form of packaging for the goods in readily deduced from existing trade mark respect of which the trade mark application case-law. was filed, and that it was devoid of any character indicating the origin of the goods, which accordingly meant that it was also 1 — Original language: Spanish. devoid of the necessary distinctive char- 2 — OJ 1989 L 40, p. 1 ('the Trade Mark Directive' or 'the Directive'). acter.

The questions referred for a preliminary ruling

2. In the case of three-dimensional trade marks which consist of the packaging 6. Those were the circumstances in which, of goods which are normally traded in on 10 April 2 0 0 1 , the Twenty-Fourth packaged form, does the establishment Chamber (Chamber dealing with trade of distinctive character within the mark appeals) of the Bundespatentgericht meaning of Article 3(1)(b) of the Direc- ordered that proceedings be stayed and that tive turn on whether or not the average the following questions concerning the consumer, who is reasonably well-in¬

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formed and reasonably observant and Analysis of the questions referred circumspect, is able to recognise the characteristic features of the three-di- mensional trade mark applied for, which differ from the norm or custom in the sector and are therefore decisive as regards its capability of serving as an 8. The three questions referred concern the indication of origin, even without con- interpretation of Article 3(1)(b), (c) and (e) ducting an analytical or comparative of the Trade Mark Directive, which pro- examination and without paying par- vide: ticular attention?

3. Can the necessary assessment of dis- ' 1 . The following shall not be registered or tinctive character be made solely on the if registered shall be liable to be declared basis of the relevant national trade invalid: perceptions, without further official investigations being necessary to estab- lish whether and to what extent ident- ical or comparable trade marks have been registered or refused registration in other Member States of the Euro- pean Union?'

— the shape which results from the 10. It is my opinion that, where goods are nature of the goods themselves, or generally sold in bottled form, the packag- ing, rather than being equated with the goods, is actually a component of the goods. Moreover, from the point of view of a consumer, the packaging is the only visible, distinguishable element, and there- fore, for the purpose of trade mark law, it is — the shape of goods which is necess- the only relevant part of the goods. ary to obtain a technical result, or

— the shape which gives substantial 11. That conclusion may appear to be value to the goods; contrary to Article 2 of the Directive, under which 'any sign capable of being repre- sented 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

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other undertakings' 3 may constitute a available; its shape, their function; and its trade mark. Strictly speaking, goods and material, their weight. In the eyes of a packaging are separate items. However, the consumer, those characteristics may even provisions must be read in the light of the be more important than the real or pre- aim of the Directive, which is not, on the sumed attributes of the liquid itself. whole, notable for the technical precision of its wording.

16. Finally, it is also appropriate to men- 3 — Emphasis added. tion — by way of illustration only, since

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HENKEL

they are not legally binding 4— the joint be applied by national courts when assess- statements of the Council and the Com- ing whether a three-dimensional trade mission of the European Communities mark has distinctive character for the which are set out in the Minutes of the purpose of Article 3(1)(b) of the Directive Council meeting held to mark the adoption (tangible distinctive character). The refer- of the Trade Mark Directive, and which ring court asks whether an average con- include the following reference to sumer, who is reasonably well-informed Article 3(1)(e) of the Directive: and reasonably observant and circumspect, should be able to recognise the character- istic features of the shape concerned, with- out the need for analysis or comparison, and without paying particular attention.

'The Council and the Commission consider t h a t w h e r e goods are p a c k a g e d , the expression "shape of goods" includes the shape of the packaging.'

19. Since the judgment in Gut Springen¬ 17. In view of the matters set out above, I heide and Tusky, 5the Court has applied a propose that the reply to the first question general, uniform test in order to determine referred for a preliminary ruling should be whether a description, trade mark or pro- that, for the purpose of Community trade motional description are liable to mislead mark law, where goods are normally traded the purchaser, which is based on the in packaged form, the term three-dimen- presumed expectations of an average con- sional goods should be taken to mean the sumer who is reasonably well-informed and shape of the packaging. reasonably observant and circumspect, without commissioning an expert's report or a consumer research poll. 6

2 1 . There is no reason to depart from that line of reasoning where the issue specifi- cally concerns the shape of the packaging of goods which are normally traded in packaged form. If the national court is able to assess whether a sign has the capacity to dis- tinguish, by reference to the presumed expectations of an average consumer who is reasonably well-informed and reasonably observant and circumspect, it does not appear to be necessary to commission additional research, such as the analytical or comparative studies referred to by the Bundespatentgericht. Conversely, such 22. I therefore propose that the reply to the studies do not absolve the national court second question should be that when from the need to exercise its own faculty of examining why registration has been ref- judgment based on the standard of the used, under Article 3(1)(b) of the Directive, average consumer as defined in Community for, inter alia, a three-dimensional sign law. 10 consisting of the shape of goods which are usually traded in packaged form, the regis- tration authority and, where appropriate, 7 — See the judgments in Case C-303/97 Sektkellerei Kessler the national court must do so from the [1999] ECR I-513, paragraph 36; Case C-220/98 Estéé Lauder [2000] ECR I-117, paragraph 27; and Case C-30/99 perspective of an average consumer of the Commission v Ireland [2001] ECR I-4619, paragraph 32. goods or services concerned, who is reason- 8 — See the judgment in Case C-342/97 Lloyd Schuhfabrik [1999] ECR I-3819, paragraph 26. ably well-informed and reasonably observ- 9 — Judgment in Case C-299/99 Philips [2002] ECR I-5475, ant and circumspect, without the need to paragraph 63. commission additional analytical or com- 10 — See the Opinion of Advocate General Fennelly in Estéé Lauder, paragraph 29. parative research.

25. In short, it is appropriate to reply to the third question that when assessing whether a sign in respect of which a trade mark application has been made has tangible However, there is no relationship of sub- d i s t i n c t i v e c h a r a c t e r , the c o m p e t e n t ordination between the Court of Justice national authorities are not required to take account of practices in other Member States with regard to goods or services 11 — See, as regards harmonisation of trade marks, the judg- which are similar to those in respect of m e n t in Case C-63/97 BMW [1999] ECR I - 9 0 5 , paragraph 22. which the application was made.

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Conclusion

26. In the light of the foregoing considerations, I propose that the Court should reply to the questions referred by the Bundespatentgericht for a preliminary ruling as follows:

(1) For the purpose of Community trade mark law, where goods are normally traded in packaged form, the term goods should be taken to mean the shape of the packaging.