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Order of the Court (Sixth Chamber) of 5 October 2004. # Alcon Inc. v Office for Harmonisation in the Internal Market (Trade Marks and Designs). # Appeal - Community trade mark - Regulation (EC) No 40/94 - Invalidity of Community trade mark - Article 51 of Regulation No 40/94 - Absolute ground for refusal to register - Article 7(1)(d) of Regulation No 40/94 - Distinctive character acquired through use - Article 7(3) of Regulation No 40/94 - Term "BSS'. # Case C-192/03 P.

ECLI:EU:C:2004:587

62003CO0192

October 5, 2004
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Valentina R., lawyer

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

(Appeal – Community trade mark – Regulation (EC) No 40/94 – Invalidity of the Community trade mark – Article 51 of Regulation No 40/94 – Absolute ground for refusal to register – Article 7(1)(d) of Regulation No 40/94 – Distinctive character acquired through use – Article 7(3) of Regulation No 40/94 – Term ‘BSS’)

Summary of the Order

Community trade mark – Surrender, revocation and invalidity – Absolute grounds for invalidity – Registration in breach of the provisions of Article 7(1)(d) of Regulation No 40/94 – Material date for the examination of whether the mark has become customary – Taking account of circumstances subsequent to the date of filing the application for registration – Whether permitted

(Council Regulation No 40/94, Arts 7(1)(d) and 51(1)(a))

While the date of filing the application for registration of a Community trade mark is the material date for the examination of the absolute ground for invalidity referred to in Articles 7(1)(d) and 51(1)(a) of Regulation No 40/94, relating to whether the mark has become customary, it is possible without inconsistency in reasoning or error of law for material to be taken into account which, although subsequent to the date of filing the application, enables the drawing of conclusions on the situation as it was on that date.

(see paras 40-41)

ORDER OF THE COURT (Sixth Chamber) 5 October 2004(1)

(Appeal – Community trade mark – Regulation (EC) No 40/94 – Invalidity of Community trade mark – Article 51 of Regulation No 40/94 – Absolute ground for refusal to register – Article 7(1)(d) of Regulation No 40/94 – Distinctive character acquired through use – Article 7(3) of Regulation No 40/94 – Term ‘BSS’)

In Case C-192/03 P,

appellant,

APPEAL under Article 56 of the Statute of the Court of Justice brought on 2 May 2003,

the other parties to the proceedings being:

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by S. Laitinen and A. Sesma Merino, acting as Agents,

defendant at first instance,

Dr Robert Winzer Pharma GmbH, established in Olching (Germany), represented by S. Schneller, Rechtsanwalt,

intervener at first instance,

THE COURT (Sixth Chamber),

composed of: J.-P. Puissochet (Rapporteur), President of the Chamber, F. Macken and U. Lõhmus, Judges,

Advocate General: M. Poiares Maduro, Registrar: R. Grass,

makes the following

Judgment

1 This request for a preliminary ruling concerns the interpretation of Directive 2011/92/EU of the European Parliament and of the Council of 13 December 2011 on the assessment of the effects of certain public and private projects on the environment (OJ 2012 L 26, p. 1), as amended by Directive 2014/52/EU of the European Parliament and of the Council of 16 April 2014 (OJ 2014 L 124, p. 1) (‘Directive 2011/92’).

2 The request has been made in proceedings between, on the one hand, Waltham Abbey Residents Association and, on the other hand, An Bord Pleanála (Planning Board, Ireland; ‘the Board’), Ireland and the Attorney General (Ireland), concerning authorisation granted by the Board for a strategic residential housing development.

Legal context

European Union law

Directive 2011/92

Recitals 7 to 9 of Directive 2011/92 state:

‘(7) Development consent for public and private projects which are likely to have significant effects on the environment should be granted only after an assessment of the likely significant environmental effects of those projects has been carried out. …

(8) Projects belonging to certain types have significant effects on the environment and those projects should, as a rule, be subject to a systematic assessment.

(9) Projects of other types may not have significant effects on the environment in every case and those projects should be assessed where the Member States consider that they are likely to have significant effects on the environment.’

4 Article 2(1) of that directive provides:

‘Member States shall adopt all measures necessary to ensure that, before development consent is given, projects likely to have significant effects on the environment by virtue, inter alia, of their nature, size or location are made subject to a requirement for development consent and an assessment with regard to their effects on the environment. Those projects are defined in Article 4.’

Under Article 3(1) of that directive:

‘The environmental impact assessment shall identify, describe and assess in an appropriate manner, in the light of each individual case, the direct and indirect significant effects of a project on the following factors:

(b) biodiversity, with particular attention to species and habitats protected under [Council Directive 92/43/EEC of 21 May 1992 on the conservation of natural habitats and of wild fauna and flora (OJ 1992 L 206, p. 7), as amended by Council Directive 2013/17/EU of 13 May 2013 (OJ 2013 L 158, p. 193) (“Directive 92/43”)] and Directive 2009/147/EC [of the European Parliament and of the Council of 30 November 2009 on the conservation of wild birds (OJ 2010 L 20, p. 7)];

…’

Article 4 of Directive 2011/92 provides:

‘1. Subject to Article 2(4), projects listed in Annex I shall be made subject to an assessment in accordance with Articles 5 to 10.

(a) a case-by-case examination;

(b) thresholds or criteria set by the Member State.

Member States may decide to apply both procedures referred to in points (a) and (b).

Where a case-by-case examination is carried out or thresholds or criteria are set for the purpose of paragraph 2, the relevant selection criteria set out in Annex III shall be taken into account. Member States may set thresholds or criteria to determine when projects need not undergo either the determination under paragraphs 4 and 5 or an environmental impact assessment, and/or thresholds or criteria to determine when projects shall in any case be made subject to an environmental impact assessment without undergoing a determination set out under paragraphs 4 and 5.

Where Member States decide to require a determination for projects listed in Annex II, the developer shall provide information on the characteristics of the project and its likely significant effects on the environment. The detailed list of information to be provided is specified in Annex IIA. The developer shall take into account, where relevant, the available results of other relevant assessments of the effects on the environment carried out pursuant to Union legislation other than this Directive. The developer may also provide a description of any features of the project and/or measures envisaged to avoid or prevent what might otherwise have been significant adverse effects on the environment.

The competent authority shall make its determination, on the basis of the information provided by the developer in accordance with paragraph 4 taking into account, where relevant, the results of preliminary verifications or assessments of the effects on the environment carried out pursuant to Union legislation other than this Directive. The determination shall made available to the public and:

(a) where it is decided that an environmental impact assessment is required, state the main reasons for requiring such assessment with reference to the relevant criteria listed in Annex III; or

(b) where it is decided that an environmental impact assessment is not required, state the main reasons for not requiring such assessment with reference to the relevant criteria listed in Annex III, and, where proposed by the developer, state any features of the project and/or measures envisaged to avoid or prevent what might otherwise have been significant adverse effects on the environment.

Member States shall ensure that the competent authority makes its determination as soon as possible and within a period of time not exceeding 90 days from the date on which the developer has submitted all the information required pursuant to paragraph 4. In exceptional cases, for instance relating to the nature, complexity, location or size of the project, the competent authority may extend that deadline to make its determination; in that event, the competent authority shall inform the developer in writing of the reasons justifying the extension and of the date when its determination is expected.’

Annex II.A of that directive contains the list of ‘information to be provided by the developer on the projects listed in Annex II’. That list reads as follows:

‘1. A description of the project, including in particular:

(a) a description of the physical characteristics of the whole project and, where relevant, of demolition works;

(b) a description of the location of the project, with particular regard to the environmental sensitivity of geographical areas likely to be affected.

(a) the expected residues and emissions and the production of waste, where relevant;

(b) the use of natural resources, in particular soil, land, water and biodiversity.

Annex III to that directive sets out the ‘criteria to determine whether the projects listed in Annex II should be subject to an environmental impact assessment’.

Directive 2014/52

Recitals 11 and 29 of Directive 2014/52 state:

‘(11) The measures taken to avoid, prevent, reduce and, if possible, offset significant adverse effects on the environment, in particular on species and habitats protected under [Directive 92/43] and Directive 2009/147 …, should contribute to avoiding any deterioration in the quality of the environment and any net loss of biodiversity, in accordance with the [European] Union’s commitments in the context of the [United Nations Convention on Biological Diversity, signed in Rio de Janeiro on 5 June 1992,] and the objectives and actions of the Union Biodiversity Strategy up to 2020 laid down in the [Communication from the Commission to the European Parliament, the Council, the Economic and Social Committee and the Committee of the Regions] of 3 May 2011 entitled ‘Our life insurance, our natural capital: an EU biodiversity strategy to 2020’ [(COM(2011) 244 final)]

(29) When determining whether significant effects on the environment are likely to be caused by a project, the competent authorities should identify the most relevant criteria to be considered and should take into account information that could be available following other assessments required by Union legislation in order to apply the screening procedure effectively and transparently. In this regard, it is appropriate to specify the content of the screening determination, in particular where no environmental impact assessment is required. Moreover, taking into account unsolicited comments that might have been received from other sources, such as members of the public or public authorities, even though no formal consultation is required at the screening stage, constitutes good administrative practice.’

Directive 92/43

Article 6(3) of Directive 92/43 provides:

‘Any plan or project not directly connected with or necessary to the management of the site but likely to have a significant effect thereon, either individually or in combination with other plans or projects, shall be subject to appropriate assessment of its implications for the site in view of the site’s conservation objectives. In the light of the conclusions of the assessment of the implications for the site and subject to the provisions of paragraph 4, the competent national authorities shall agree to the plan or project only after having ascertained that it will not adversely affect the integrity of the site concerned and, if appropriate, after having obtained the opinion of the general public.’

Article 12(1) of that directive provides:

‘Member States shall take the requisite measures to establish a system of strict protection for the animal species listed in Annex IV(a) in their natural range, prohibiting:

(a) all forms of deliberate capture or killing of specimens of these species in the wild;

(b) deliberate disturbance of these species, particularly during the period of breeding, rearing, hibernation and migration;

(c) deliberate destruction or taking of eggs from the wild;

(d) deterioration or destruction of breeding sites or resting places.’

Point (a) of Annex IV to that directive mentions ‘all species’ of bats belonging to the suborder of ‘microchiroptera’.

Irish law

20First, the appellant submits that the Court of First Instance applied Article 7(1)(d) of Regulation No 40/94 incorrectly by considering that the term BSS had become customary.

21It submits that the Court of First Instance wrongly took into consideration documents produced as evidence by the intervener which were either dated after the date of filing the application for registration of the BSS mark, in this case 1 April 1996, the only relevant date for assessing the ground of invalidity in question, or published outside the European Union. The intervener produced no evidence from any person trading in the goods in question to show that the term BSS was customary. The mere mention of a sign as the name or description of a product in a dictionary or other publication is not sufficient to show that that sign has become customary in the current language of the target public.

22The appellant submits, moreover, that the Court of First Instance should have taken account of its arguments concerning the active steps it had taken to monitor references by other parties to BSS and prevent misuse of its mark by third parties.

23Second, the appellant submits that the Court of First Instance wrongly disregarded the evidence it had produced to show that the BSS mark had acquired distinctive character through use, on the basis of Article 7(3) and 51(2) of Regulation No 40/94. The Court of First Instance relied, in paragraph 56 of the judgment under appeal, on a particular point, the absence of evidence as to the effects of the mark monitoring programme on the target public, while it did not make the same demands as regards the evidence put forward by the intervener. It thus did not treat the evidence of the two parties to the dispute in the same way.

24OHIM observes that the appeal concerns the first case brought before the Court of First Instance and the Court of Justice relating to an application for invalidity of a Community trade mark.

25Relying on Case C-104/00 P DKV v OHIM [2002] ECR I-7561, OHIM submits that most if not all the pleas put forward by the appellant in the appeal relate only to questions of pure fact, in particular the examination of the evidence by the Court of First Instance, the appraisal of which is not within the jurisdiction of the Court when hearing an appeal.

26In the alternative, as regards the interpretation both of Article 7(1)(d) and of Articles 7(3) and 51(2) of Regulation No 40/94, OHIM considers that the Court of First Instance did not err in law. As regards the evidence produced by the intervener, even supposing that the Court may consider its effect, OHIM submits that the Court of First Instance was entitled to consider that that evidence established that the term BSS had already become customary at the date of filing the application for registration and that the mark had thereby lost its distinctive character.

27The intervener submits that the evidence it produced to the Cancellation Division of OHIM, the Board of Appeal and the Court of First Instance clearly shows the generic nature, in the bona fide and established practices of the trade, of the BSS mark in respect of the goods concerned, and that that evidence was taken into account correctly by OHIM and the Court of First Instance.

Findings of the Court

28In considering that the BSS mark consisted exclusively of signs or indications which had become customary in the current language of the target public to designate the goods for which that mark had been registered, and that it had been lawfully declared invalid on that ground by the contested decision, the Court of First Instance correctly pointed out, in paragraph 39 of the judgment under appeal, that it was not the descriptive nature of the mark that was decisive but current usage in the sectors covering trade in those goods (see, with respect to the essentially identical provisions of Article 3(1)(d) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1), Merz & Krell, paragraph 35).

29The Court of First Instance also applied Article 7(1)(d) of Regulation No 40/94 correctly when it noted, in paragraph 40 of the judgment under appeal, that signs or indications constituting a trade mark which have become customary in the current language or in the bona fide and established practices of the trade to designate the goods or services covered by that mark are not capable of distinguishing the goods or services of one undertaking from those of other undertakings and do not therefore fulfil the essential function of a trade mark – unless the use which has been made of those signs or indications has enabled them to acquire a distinctive character (see, by analogy, Merz & Krell, paragraph 37).

30Nor did the Court of First Instance err in law by considering, in paragraph 42 of the judgment under appeal, that, for the purposes of assessing whether the mark at issue was customary, the relevant point of view was that of the specialist medical public, namely ophthalmologists and ophthalmic surgeons practising in the European Union.

31The legal context of the dispute having thus been correctly determined, the Court of First Instance, analysing the evidence produced by the appellant and the intervener respectively, considered that all that evidence showed that the BSS mark had become customary for the target public concerned and that the use made of the mark had not been able to confer distinctive character on it.

32In support of its claim to have the judgment under appeal set aside, the appellant submits, first, that the Court of First Instance did not take sufficient account of the evidence it had produced before the Cancellation Division and the Board of Appeal of OHIM, and that it attached too much weight, on the other hand, to the evidence produced by the intervener before those bodies.

33However, findings of the Court of First Instance that the applicant has not produced the necessary evidence to support its allegations or that it has not shown that the evidence is correct are findings of fact which are within the sole jurisdiction of that Court and may not be challenged on appeal (see, to that effect, Case C-283/90 P Vidrányi v Commission [1991] ECR I-4339, paragraphs 16 and 17, and Case C-191/98 P Tzoanos v Commission [1999] ECR I-8223, paragraph 23), unless the Court of First Instance has distorted the clear sense of the evidence put before it (see, to that effect, Case C-237/98 P Dorsch Consult v Council and Commission [2000] ECR I-4549, paragraphs 35 and 36).

34By its arguments, as OHIM rightly observes, the appellant in fact confines itself to challenging the assessment of the facts made by the Court of First Instance without alleging any distortion of the evidence in the case-file put before that Court. That assessment is not a point of law which is subject, as such, to review by the Court of Justice on appeal (DKV v OHIM, paragraph 22, and the order in Case C-326/01 P Telefon & Buch v OHIM [2004] ECR I-0000, paragraph 35). Nor does the appellant allege that the judgment under appeal is vitiated by an error of law in the application of the rules on the burden of proof (see, to that effect, Case C-199/92 P Hüls v Commission [1999] ECR I-4287, paragraphs 64 and 65).

35Second, the appellant submits that the Court of First Instance erred in law by not taking as the relevant date the date of filing of the application for registration of the BSS mark, in this case 1 April 1996. Only that date is material for assessing whether a Community mark has become customary so that it must be declared invalid pursuant to Article 51(1) of Regulation No 40/94. It submits that that error is disclosed by the fact that the Court of First Instance mentioned, in particular in paragraph 45 of the judgment under appeal, documents dated after 1 April 1996. That Court also wrongly took into account, in paragraph 44 of the judgment under appeal, documents published outside the European Union, which could not reflect the perception of the target public mentioned above.

36The two parts of this second plea should be distinguished.

37The first part relates to the taking into consideration by the Court of First Instance of documents dated later than the application for registration in order to assess whether a mark has become customary. If by this part of the plea the appellant’s intention is to challenge that Court’s assessment, on the basis of those documents, of whether the mark was customary at the date of the application for registration, it must be noted that that assessment of the evidence does not constitute a point of law which it is for this Court to examine. If, on the other hand, the appellant wishes to show that by taking those documents into consideration the Court of First Instance implicitly took a date subsequent to the application for registration as the material date for analysing whether the term BSS was customary, such a criticism raises a point of law which the Court must consider.

38In the present case, however, this first part of the plea is unfounded.

39The Court of First Instance expressly stated, in paragraph 46 of the judgment under appeal, that the Board of Appeal had been right to consider, in paragraph 19 of the contested decision, that the evidence provided by the intervener showed that the term BSS had become customary ‘at the time of the [appellant’s] application’. In its analysis, it did not therefore take a date other than that put forward by the appellant for examining the alleged ground of invalidity.

40OHIM rightly stated in this respect that the date of filing the application for registration of the Community trade mark is the material date for that examination.

41Moreover, the Court of First Instance could without inconsistency in its reasoning or error of law take account of material which, although subsequent to the date of filing the application, enabled the drawing of conclusions on the situation as it was on that date (see, by analogy, the order in Case C-259/02 La Mer Technology [2004] ECR I-0000, paragraph 31).

42In the second part of this plea, the appellant submits that the Court of First Instance took into consideration, in paragraph 44 of the judgment under appeal, certain documents published in the United States. However, that circumstance does not establish that the Court of First Instance based its analysis on evidence that did not affect the target public. By stating in paragraph 42 of the judgment under appeal that English was the technical language of specialists in the relevant field, and by referring in paragraph 43 of the judgment under appeal to the perception of the term BSS as a generic term by the ‘scientific community’, the Court of First Instance necessarily considered that those documents, although published outside the European Union, supported the conclusion that the target public regarded that term as having become customary. In so doing it made an assessment of pure fact, which the appellant cannot challenge on appeal.

43The second plea in law must therefore be rejected.

44In the light of all the foregoing, the appellant’s appeal is clearly unfounded and must therefore be dismissed.

Costs

45Under the second paragraph of Article 69 of the Rules of Procedure, which apply to the procedure on appeal by virtue of Article 118 of those Rules, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since OHIM and the intervener have applied for costs and the appellant has been unsuccessful, it must be ordered to pay the costs.

On those grounds, the Court (Sixth Chamber) hereby orders:

Signatures.

(1) Language of the case: English.

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