«(Appeal – Community trade mark – Regulation (EC) No 40/94 – Absolute ground for refusal to register – Distinctive character – Marks consisting exclusively of descriptive signs or indications – Streamserve)»

Order of the Court (Fourth Chamber), 5 February 2004

Summary of the Order

1.By prohibiting the registration as a Community trade mark of signs or indications which may serve, in trade, to designate the characteristics of the goods or services for which registration is sought, Article 7(1)(c) of Regulation No 40/94 pursues an aim which is in the general interest, namely that such signs or indications may be freely used by all. That provision accordingly precludes such signs or indications being reserved to a single undertaking as a result of the registration of the trade mark. see paras 24-25

2.The Court of First Instance's assessment of the facts in an action for annulment brought against the decision of a Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs), which leads it to consider that a sign for which registration is sought does not appear unusual for the relevant consumers, is not a point of law which is subject, as such, to review by the Court of Justice on appeal. see paras 29-30

ORDER OF THE COURT (Fourth Chamber) 5 February 2004 (1)

(Appeal – Community trade mark – Regulation (EC) No 40/94 – Absolute ground for refusal to register – Distinctive character – Marks consisting exclusively of descriptive signs or indications – Streamserve)

In Case C-150/02 P, Streamserve Inc., represented by J. Kääriäinen, advokat, with an address for service in Luxembourg,

appellant,

APPEAL against the judgment of the Court of First Instance of the European Communities (Fourth Chamber) of 27 February 2002 in Case T-106/00 Streamserve v OHIM (Streamserve) [2002] ECR II-723, seeking the annulment of that judgment in so far as the Court of First Instance held that the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) had not infringed Article 7(1)(c) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1) in its decision of 28 February 2000 refusing registration of the word Streamserve as a Community trade mark, other than as regards goods in the categories manuals and publications (Case R-423/1999-2), the other party to the proceedings being: Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by E. Joly, acting as Agent, defendant at first instance,

THE COURT (Fourth Chamber),

composed of: J.N. Cunha Rodrigues, President of the Chamber, J.-P. Puissochet (Rapporteur) and F. Macken, Judges,

Advocate General: F.G. Jacobs, Registrar: R. Grass,

after hearing the Opinion of the Advocate General, 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.

ECLI:EU:C:2025:140

(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.’

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.

3. A description of any likely significant effects, to the extent of the information available on such effects, of the project on the environment resulting from:

(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

Thirdly, the Court of First Instance pointed out, in regard to the same goods, that the contested decision could lawfully be taken on the sole basis of Article 7(1)(c) of Regulation No 40/94 and that, accordingly, the appellant's argument that the decision rather infringed Article 7(1)(b) of that regulation was invalid and must therefore be rejected.

In contrast, the Court of First Instance found that OHIM had established neither that Streamserve could be descriptive nor that it was devoid of distinctive character for goods within the categories manuals and publications. It therefore annulled the contested decision in so far as it refused the application for registration of Streamserve for goods within those two categories.

The appeal

The appellant claims that the Court should, first of all, set aside the contested judgment in so far as it upheld the contested decision for goods not in the categories manuals and publications and, secondly, annul the contested decision. It also requests that OHIM be ordered to pay the costs.

OHIM contends that the appeal should be dismissed and the appellant be ordered to pay the costs.

Under Article 119 of the Rules of Procedure, where the appeal is clearly unfounded, the Court may at any time, acting on a report from the Judge-Rapporteur, and after hearing the Advocate General, by reasoned order dismiss the appeal.

The first ground of appeal

By its first ground of appeal the appellant argues that the Court of First Instance erred in law in finding that Article 7(1)(c) of Regulation No 40/94 pursues an aim which is in the public interest, namely that the signs and indications referred to in that article may be freely used by all. That statement by the Court of First Instance is not wholly reconcilable with the view taken by Advocate General Jacobs as expressed in his Opinion in the Baby-Dry case, and accepted by the Court of Justice (Case C-383/99 P Procter & Gamble v OHIM [2001] ECR I-6251), to the effect that Article 7(1)(c) of Regulation No 40/94 is intended not to prevent any monopolising of ordinary descriptive terms but rather to avoid the registration of descriptive brand names for which no protection could be available (see paragraph 78 of the Opinion). In those circumstances, the Court of First Instance adopted a test that was too severe in the application of those provisions to the facts of the case.

Under Article 4 of Regulation No 40/94, any signs capable of being represented graphically may constitute a Community trade mark provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.

Article 7(1)(c) of Regulation No 40/94 provides that 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 may not be registered.

Accordingly, signs and indications which may serve, in trade, to designate the characteristics of the goods or services in respect of which registration is sought are, under Regulation No 40/94, deemed to be incapable, by their very nature, of fulfilling the trade mark's function as an indication of origin, without prejudice to the possibility of such distinctive character being acquired through use as provided for under Article 7(3) of Regulation No 40/94.

By prohibiting the registration as a Community trade mark of signs or indications which may serve, in trade, to designate the characteristics of the goods or services for which registration is sought, Article 7(1)(c) of Regulation No 40/94 pursues an aim which is in the general interest, namely that such signs or indications may be freely used by all. That provision accordingly precludes such signs or indications being reserved to a single undertaking as a result of the registration of the trade mark (see, in relation to the identical provisions of Article 3(1)(c) 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), Joined Cases C-108/97 and C-109/97 Windsurfing Chiemsee [1999] ECR I-2779, paragraph 25, and Joined Cases C-53/01 to C-55/01 Linde and Others [2003] ECR I-3161, paragraph 73, and, as regards Article 7(1)(c) of Regulation No 40/94, the judgment of 23 October 2003 in Case C-191/01 P OHIM v Wrigley, not yet published in the ECR).

Accordingly, in finding, at paragraph 36 of the contested judgment, that Article 7(1)(c) of Regulation No 40/94 pursues an aim which is in the public interest, namely that the proposed signs and indications may be freely used by all, the Court of First Instance did not fail to take account of the objectives of those provisions and accordingly interpreted them correctly.

The grounds are therefore not vitiated by any error of law.

The first ground of appeal must therefore be rejected.

Second ground of appeal

By its second ground of appeal the appellant argues that the Court of First Instance misinterpreted the facts in holding that the word Streamserve did not appear unusual for the relevant consumers. It claims that this word, made up of the verb serve and the noun stream, does not consist exclusively of signs or indications designating one of the characteristics of the goods concerned but is inventive, inasmuch as it is not used in the specific language of computers and the internet to designate the goods referred to in the application for registration or any of their characteristics.

First of all, in claiming that the Court of First Instance, by misinterpreting the facts of the case, found that the word Streamserve is usual for the public concerned and is not capable of being used to designate the characteristics of the goods to which the application for registration relates, the appellant is in reality confining itself to challenging ─ and without pleading any distortion of the clear sense of the evidence in the file submitted to the Court of First Instance ─ the findings of fact made by that Court. Accordingly, that finding does not constitute a point of law which is subject, as such, to review by the Court of Justice on appeal (Case C-104/00 P DKV v OHIM [2002] ECR I-7561, paragraph 22).

Secondly, in concluding from all the findings made, at paragraphs 44 to 48 of the contested judgment, that the word Streamserve could serve, in trade, to designate a characteristic of most of the goods referred to in the application for registration, the Court of First Instance applied Article 7(1)(c) of Regulation No 40/97 correctly (OHIM v Wrigley, paragraph 32).

In those circumstances the second ground of appeal must be rejected.

It follows from all of the foregoing that the appeal is clearly unfounded and must therefore be dismissed.

Costs

Under Article 69(2) of the Rules of Procedure of the Court of Justice, which applies to appeal proceedings by virtue of Article 118, 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 has applied for costs, and the appellant has been unsuccessful, the latter must be ordered to pay the costs.

On those grounds,

THE COURT (Fourth Chamber) hereby orders:

The appeal is dismissed.

The appellant is to pay the costs.

Luxembourg, 5 February 2004.

J.N. Cunha Rodrigues

Registrar

President of the Fourth Chamber

Language of the case: English.