OPINION OF ADVOCATE GENERAL

RUIZ-JARABO COLOMER delivered on 14 January 2003 (1)

Deutsches Patent- und Markenamt

(Reference for a preliminary ruling from the Bundespatentgericht (Germany))

((Trade Mark Directive – Article 3(1)(b), (c) and (e) – Three-dimensional trade mark consisting of the packaging of goods which are normally traded in packaged form))

Background

5. Henkel appealed against the decision to refuse the application to the Federal Trade Mark and Patent Court (Bundespatentgericht), claiming that the trade mark applied for is distinctive in character in terms of its overall appearance, because the particular combination of shape and colours (elements which consumers identify as signs of origin) causes it to stand out clearly from competing products. The appellant also submitted the results of a survey it had commissioned, which showed that a large number of consumers would recognise the bottle in respect of which the application had been made as belonging to a particular detergent. Henkel also argued that the trade mark applied for was not caught by the prohibition on registering descriptive signs which must remain freely available to operators because the trade is not reliant on the shape and colour in question, since it is able to choose from a wide range of wool detergent bottles.

The questions referred for a preliminary ruling

6. Those were the circumstances in which, on 10 April 2001, the Twenty-Fourth Chamber (Chamber dealing with trade mark appeals) of the Bundespatentgericht ordered that proceedings be stayed and that the following questions concerning the interpretation of the Trade Mark Directive be referred to the Court of Justice:

(a) the packaging of the goods is to be regarded as the shape of the goods for the purpose of Article 3(1)(e) of the Directive; and

(b) the packaging of the goods may serve to designate the (external) quality of the packaged goods for the purpose of Article 3(1)(c) of the Directive?

Procedure before the Court

7. The order for reference was received at the Court Registry on 29 May 2001. After the conclusion of the written phase, in which only the Commission submitted observations, the hearing was held on 14 November 2002 and was attended by the representatives of the Commission and the applicant.

Analysis of the questions referred

(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;

(e) signs which consist exclusively of:

─ the shape which results from the nature of the goods themselves, or

─ the shape of goods which is necessary to obtain a technical result, or

─ the shape which gives substantial value to the goods;

The first question

11. That conclusion may appear to be contrary to Article 2 of the Directive, under which any sign capable of being represented 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 other undertakings (3) may constitute a trade mark. Strictly speaking, goods and packaging are separate items. However, the provisions must be read in the light of the aim of the Directive, which is not, on the whole, notable for the technical precision of its wording.

12. In the case of liquids, and of gases and certain granulated or highly brittle materials which do not constitute bodies because they are devoid, inter alia, of a clearly defined size and form, packaging is the only shape which consumers can identify and which is capable of being represented graphically. For the purpose of trade mark law, the three-dimensional shape of such substances is the shape of the packaging in which they are displayed; therefore, in this context, goods should be taken to mean the container in which they are traded.

13. Furthermore, it is not in keeping with market reality to differentiate a container from its contents by regarding the latter alone as goods. For many articles, the way they are packaged can be a decisive factor in encouraging a purchase. The size of the packaging determines the quantity of goods available; its shape, their function; and its material, their weight. In the eyes of a consumer, those characteristics may even be more important than the real or presumed attributes of the liquid itself.

15. As concerns Article 3(1)(e), the identity to which I have referred is a public interest requirement, since, if packaging were deemed to be separate from the substance it contained, with the result that the restrictions relating to the shape of the goods did not apply, as Henkel's representative submits, it would be extremely easy to circumvent the absolute prohibition which has hitherto applied to three-dimensional shapes which have aesthetic value or practical suitability.

16. Finally, it is also appropriate to mention ─ by way of illustration only, since they are not legally binding (4) ─ the joint statements of the Council and the Commission of the European Communities which are set out in the Minutes of the Council meeting held to mark the adoption of the Trade Mark Directive, and which include the following reference to Article 3(1)(e) of the Directive: The Council and the Commission consider that where goods are packaged, the expression shape of goods includes the shape of the packaging.

17. In view of the matters set out above, I propose that the reply to the first question referred for a preliminary ruling should be that, for the purpose of Community trade mark law, where goods are normally traded in packaged form, the term three-dimensional goods should be taken to mean the shape of the packaging.

The second question

19. Since the judgment in Gut Springenheide and Tusky, (5) the Court has applied a general, uniform test in order to determine whether a description, trade mark or promotional description are liable to mislead the purchaser, which is based on the presumed expectations of an average consumer who is reasonably well-informed and reasonably observant and circumspect, without commissioning an expert's report or a consumer research poll. (6)

22. I therefore propose that the reply to the second question should be that when examining why registration has been refused, under Article 3(1)(b) of the Directive, for, inter alia, a three-dimensional sign consisting of the shape of goods which are usually traded in packaged form, the registration authority and, where appropriate, the national court must do so from the perspective of an average consumer of the goods or services concerned, who is reasonably well-informed and reasonably observant and circumspect, without the need to commission additional analytical or comparative research.

23. Finally, the Bundespatentgericht seeks guidance on whether the practices of registration offices and courts in other Member States, vis-à-vis the registration of identical or comparable trade marks, should influence the assessment of the individual distinctive character of the trade mark under consideration.

24. The Trade Mark Directive seeks to approximate the laws of the Member States by harmonising, rather than unifying, them. National administrations and courts therefore have a duty to interpret national legislation in the light of the wording and purpose of the Directive, in order to achieve the result pursued by the latter and thereby comply with the third paragraph of Article 249 EC, (11) referring questions to the Court of Justice for a preliminary ruling where appropriate. However, there is no relationship of subordination between the Court of Justice and the national courts, or between the courts of the Member States. Nor is there any obligation to reach the same result, still less to apply the same principles of interpretation. Moreover, the expectations of the average consumer to which I have referred above can vary according to territory, from which it follows that the practice in a particular Member State is not binding on the authorities of another State. However, in the interests of prudence and mutual good faith, which are founded on the pursuit of the abovementioned aim, such practice ─ and, in particular, the reasoning on which it is based ─ is a helpful indication to which the competent authority may have regard when assessing a sign's distinctiveness. Nevertheless, there is no requirement for the competent authority to commission its own official enquiries in that regard.

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 distinctive character, the competent national authorities are not required to take account of practices in other Member States with regard to goods or services which are similar to those in respect of which the application was made.

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 <i>goods</i> should be taken to mean the shape of the packaging.

(2) When examining why registration has been refused, under Article 3(1)(b) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks, for, inter alia, a three-dimensional sign consisting of the shape of goods which are usually traded in packaged form, the registration authority and, where appropriate, the national court must do so from the perspective of an average consumer of the goods or services concerned, who is reasonably well-informed and reasonably observant and circumspect, without the need to commission additional analytical or comparative research.

(3) When assessing whether a sign in respect of which a trade mark application has been made has tangible distinctive character, the competent national authorities are not required to take account of practices in other Member States with regard to goods or services which are similar to those in respect of which the application was made.

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1 – Original language: Spanish.

2 – OJ 1989 L 40, p. 1 (the Trade Mark Directive or the Directive).

3 – Emphasis added.

4 – Due to the fact that there is no reference to the statements in the wording of the Directive. See the judgment in Case C-292/89 <i>Antonissen</i> [1991] ECR I-745, paragraph 18.

5 – Case C-210/96 [1998] ECR I-4657.

6 – Ibid., paragraph 31.

7 – See the judgments in Case C-303/97 <i>Sektkellerei Kessler</i> [1999] ECR I-513, paragraph 36; Case C-220/98 <i>Estée Lauder</i> [2000] ECR I-117, paragraph 27; and Case C-30/99 <i>Commission</i> v <i>Ireland</i> [2001] ECR I-4619, paragraph 32.

8 – See the judgment in Case C-342/97 <i>Lloyd Schuhfabrik</i> [1999] ECR I-3819, paragraph 26.

9 – Judgment in Case C-299/99 <i>Philips</i> [2002] ECR I-5475, paragraph 63.

10 – See the Opinion of Advocate General Fennelly in <i>Estée Lauder</i>, paragraph 29.

11 – See, as regards harmonisation of trade marks, the judgment in Case C-63/97 <i>BMW</i> [1999] ECR I-905, paragraph 22.