(Reference for a preliminary ruling from the High Court of Justice of England and Wales, Chancery Division)

(Trade marks – Approximation of laws – Directive 89/104/EEC – Article 2 – Concept of a sign of which a trade mark may consist – Transparent bin or collection chamber forming part of the external surface of a vacuum cleaner)

In Case C-41/24,

REQUEST for a preliminary ruling under Article 267 TFEU from the High Court (Ireland), made by decision of 1 December 2023, received at the Court on 22 January 2024, in the proceedings

Waltham Abbey Residents Association

An Bord Pleanála,

Ireland,

The Attorney General,

notice party:

O’Flynn Construction Co. Unlimited Company,

THE COURT (Tenth Chamber),

composed of D. Gratsias, President of the Chamber, J. Passer (Rapporteur) and B. Smulders, Judges,

Advocate General: J. Kokott,

Registrar: A. Calot Escobar,

having regard to the written procedure and further to the hearing on 25 April 2006,

* Language of the case: English.

EN ECLI:EU:C:2025:140

JUDGMENT OF 6. 3. 2025 – CASE C-41/24 WALTHAM ABBEY RESIDENTS ASSOCIATION

after considering the observations submitted on behalf of:

–Waltham Abbey Residents Association, by J. Devlin, Senior Counsel, J. Kenny, Barrister-at-Law, and D. Healy, Solicitor,

–An Bord Pleanála, by. B. Foley, Senior Counsel, A. Carroll, Barrister-at-Law, and P. Reilly, Solicitor,

–Ireland, by M. Browne, Chief State Solicitor, S. Finnegan, K. Hoare and A. Joyce, acting as Agents, and by D. McGrath, Senior Counsel, F. Valentine, Senior Counsel, and E. O’Callaghan, Barrister-at-Law,

–the European Commission, by M. Noll-Ehlers and N. Ruiz García, acting as Agents,

having decided, after hearing the Advocate General, to proceed to judgment without an Opinion,

gives the following

1This 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’).

2The 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.

(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.

ECLI:EU:C:2025:140

JUDGMENT OF 6. 3. 2025 – CASE C-41/24 WALTHAM ABBEY RESIDENTS ASSOCIATION

The criteria of Annex III shall be taken into account, where relevant, when compiling the information in accordance with points 1 to 3.’

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)]

…

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

15 By its action before the Court of First Instance, Dyson sought annulment of the decision of the First Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs), by which the latter had refused to register a trade mark intended for ‘[a]pparatus for cleaning, polishing and shampooing floors and carpets; vacuum cleaners; carpet shampooers; floor polishers; parts and fittings for all the aforesaid goods’. In the registration application form, Dyson described the mark sought as follows:

‘The mark consists of a transparent bin or collection chamber forming part of the external surface of a vacuum cleaner.’

16 After Dyson had withdrawn that trade mark application, the Court of First Instance, by order of 14 November 2005, held that the action had become devoid of purpose and that, accordingly, pursuant to Article 113 of the Rules of Procedure of the Court of First Instance, there was no need to adjudicate on the action. Consequently, the proceedings before this Court resumed on the same date.

17 By its questions, the national court asks, essentially, under what conditions a sign can acquire a distinctive character within the meaning of Article 3(3) of the Directive, where, as in the present case, the trader using the sign had, before its trade mark application was lodged, a de facto monopoly in the product bearing the sign.

18 It is apparent from the order for reference that those questions were raised concerning an application by Dyson to have registered two trade marks which, according to the wording of the application, consist of ‘a transparent bin or collection chamber forming part of the external surface of a vacuum cleaner as shown in the representation’.

19 As Dyson has stated on a number of occasions both in its written observations and at the hearing, and as the national court itself noted in its order for reference, the application does not seek to obtain registration of a trade mark in one or more particular shapes of transparent collecting bin – the shapes represented graphically on the application form being only examples of such a bin – but rather to obtain registration of a trade mark in the bin itself. It is, moreover, common ground that those marks consist not of a particular colour, but rather in the absence of any particular colour, namely transparency, which enables the consumer to see how much dust has been collected in the collecting bin and to know when the bin is full.

20 It follows that the trade mark application in the main proceedings covers all the conceivable shapes of a transparent collecting bin forming part of the external surface of a vacuum cleaner.

21 In its written observations and at the hearing, the Commission of the European Communities has argued that the subject-matter of such an application does not constitute a ‘sign’ within the meaning of Article 2 of the Directive and that it therefore cannot be registered as a trade mark. Accordingly, in its view, even if this question was not raised by the national court, it is necessary, before proceeding where appropriate with an interpretation of Article 3 of the Directive, to ascertain whether the subject-matter of that application fulfils the conditions laid down in Article 2 of that directive.

22 According to Dyson and the United Kingdom Government, it is not for the Court, in the context of a reference for a preliminary ruling pursuant to Article 234 EC, to raise of its own motion a question which was not touched on by the national court. At the hearing, Dyson and the United Kingdom Government stated on this point that, during the administrative proceedings, the Registrar, after having voiced objections on the issue of whether the subject-matter of Dyson’s application was a sign capable of constituting a trade mark, withdrew those objections when Dyson withdrew the application in respect of four of the six trade marks for which registration was initially sought.

23 It should be borne in mind that, according to settled case-law, the referring court alone can determine the subject-matter of the questions it proposes to refer to the Court. It is solely for the national courts before which actions are brought, and which must bear the responsibility for the subsequent judicial decision, to determine in the light of the special features of each case both the need for a preliminary ruling in order to enable them to deliver judgment and the relevance of the questions which they submit to the Court (see, to that effect, Case C‑159/97 Castelletti [1999] ECR I-1597, paragraph 14, and Case C‑154/05 Kersbergen-Lap and Dams-Schipper [2006] ECR I-0000, paragraph 21).

24 However, even though, strictly speaking, a national court directs its reference to the interpretation of certain Community provisions which might come into consideration, the Court is not thereby precluded from providing the national court with all those elements for the interpretation of Community law which may be of assistance in adjudicating on the case pending before it, whether or not that court has specifically referred to them in its questions (see, to that effect, Case C‑387/01 Weigel [2004] ECR I-4981, paragraph 44, and Case C‑152/03 Ritter‑Coulais [2006] ECR I‑1711, paragraph 29).

25 Moreover, under Article 3(1)(a) of the Directive, signs which cannot constitute a trade mark are not to be registered or if registered are liable to be declared invalid. That provision thus precludes the registration of signs which do not meet the conditions imposed by Article 2 of the Directive, the purpose of which is to define the types of sign of which a trade mark may consist (see, to that effect, Philips, paragraph 38).

26 In those circumstances, contrary to the contentions of Dyson and the United Kingdom Government, even though the wording of the questions from the national court relates solely to Article 3 of the Directive and that court did not, in the main proceedings, touch on the issue of whether the subject-matter of the application in question may be viewed as a sign of which a trade mark may consist within the meaning of Article 2 of that directive, it is necessary as a preliminary matter to consider that question (see, to that effect, Case C‑104/01 Libertel [2003] ECR I‑3793, paragraph 22).

27 Article 2 of the Directive provides that a trade mark may consist of any sign, provided that it is, first, capable of being represented graphically and, second, capable of distinguishing the goods or services of one undertaking from those of other undertakings (Philips, paragraph 32, and Case C‑273/00 Sieckmann [2002] ECR I‑11737, paragraph 39).

28 It follows that, to be capable of constituting a trade mark for the purposes of Article 2 of the Directive, the subject-matter of any application must satisfy three conditions. First, it must be a sign. Secondly, that sign must be capable of being represented graphically. Thirdly, the sign must be capable of distinguishing the goods or services of one undertaking from those of other undertakings (see, to that effect, Libertel, paragraph 23, and Case C‑49/02 Heidelberger Bauchemie [2004] ECR I‑6129, paragraph 22).

29 According to the Commission, the application lodged by Dyson does not fulfil the first of those conditions because it relates to a concept, in this case, the concept of a transparent collecting bin for a vacuum cleaner, irrespective of shape. Since a concept is not capable of being perceived by one of the five senses and appeals only to the imagination, it is not a ‘sign’ within the meaning of Article 2 of the Directive. If a concept were able to constitute a trade mark, the logic behind Article 3(1)(e) of the Directive, namely to prevent trade mark protection from granting its proprietor a monopoly on technical solutions or functional characteristics of a product, would be frustrated. Accordingly, it should not be possible to achieve that advantage by registering all the shapes which a particular functional feature might have, which would be the result of allowing the registration of a concept which can cover many physical manifestations.

30 By contrast, Dyson, supported on this point by the United Kingdom Government, takes the view that, even if it is true, as it stated at the hearing, that a concept is not a sign capable of being registered as a trade mark, its application does relate to a ‘sign’ within the meaning of Article 2 of the Directive. The concept of a ‘sign’, which is defined broadly by the case-law, in fact covers any message which may be perceived by one of the five senses. It is apparent from the main proceedings that consumers associate the transparent collecting bin which is the subject-matter of the application with Dyson. Moreover, consumers are able, first, to see that collecting bin, which is a physical component of the vacuum cleaner, and, second, to see that it is transparent. The transparent collecting bin is thus perceptible by sight and therefore cannot be considered to be a product of consumers’ imagination.

31 It should be borne in mind that, according to Article 2 of the Directive, a trade mark may consist of any sign, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging.

32 Although that provision mentions only signs which are capable of being perceived visually, are two-dimensional or three-dimensional and can thus be represented by means of letters or written characters or by a picture, it is however clear from the language of both Article 2 of the Directive and the seventh recital in the preamble thereto, which refers to a ‘list [of] examples’ of signs which may constitute a trade mark, that that list is not exhaustive. Accordingly, the Court has held previously that Article 2 of the Directive, although it does not mention signs which are not in themselves capable of being perceived visually, such as sounds or smells, does not expressly exclude them (Sieckmann, paragraphs 43 and 44, and Case C‑283/01 Shield Mark [2003] ECR I‑14313, paragraphs 34 and 35).

33 However, if that condition is not to be deprived of all substance, it cannot be accepted that the subject-matter of any trade mark application necessarily constitutes a sign within the meaning of Article 2 of the Directive.

34 As the Court has held previously, the purpose of that requirement is in particular to prevent the abuse of trade mark law in order to obtain an unfair competitive advantage (Heidelberger Bauchemie, paragraph 24).

35 In the present case, it is common ground that the subject-matter of the application in the main proceedings is not a particular type of transparent collecting bin forming part of the external surface of a vacuum cleaner, but rather, in a general and abstract manner, all the conceivable shapes of such a collecting bin.

36 In that regard, Dyson cannot maintain that the subject-matter of its application in the main proceedings is capable of being perceived visually. What consumers can identify visually is not so much the subject-matter of the application as two of Dyson’s graphic representations as contained in the application. Those representations cannot be assimilated to the subject-matter of the application because, as pointed out by Dyson on a number of occasions, they are merely examples of it.

37 It follows that, unlike the applications which gave rise to the judgments in Sieckmann and Shield Mark, the subject-matter of the application in the main proceedings is capable of taking on a multitude of different appearances and is thus not specific. As pointed out by the Advocate General in point 51 of his Opinion, the shape, the dimensions, the presentation and composition of that subject-matter depend both on the vacuum cleaner models developed by Dyson and on technological innovations. Likewise, transparency allows for the use of various colours.

38 Given the exclusivity inherent in trade mark right, the holder of a trade mark relating to such a non-specific subject-matter would obtain an unfair competitive advantage, contrary to the purpose pursued by Article 2 of the Directive, since it would be entitled to prevent its competitors from marketing vacuum cleaners having any kind of transparent collecting bin on their external surface, irrespective of its shape.

39 It follows that the subject-matter of the application at issue in the main proceedings is, in actual fact, a mere property of the product concerned and does not therefore constitute a ‘sign’ within the meaning of Article 2 of the Directive (see, to that effect, Libertel, paragraph 27).

40 Accordingly, the answer to be given to the national court must be that Article 2 of the Directive is to be interpreted as meaning that the subject-matter of an application for trade mark registration, such as that lodged in the main proceedings, which relates to all the conceivable shapes of a transparent bin or collection chamber forming part of the external surface of a vacuum cleaner, is not a ‘sign’ within the meaning of that provision and therefore is not capable of constituting a trade mark within the meaning thereof.

41 In those circumstances, it is not necessary to interpret Article 3(3) of the Directive.

Costs

42 Since these proceedings are, for the parties to the main proceedings, a step in the action pending before the national court, the decision on costs is a matter for that court. Costs incurred in submitting observations to the Court, other than the costs of those parties, are not recoverable.

On those grounds, the Court (Third Chamber) hereby rules:

Article 2 of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks is to be interpreted as meaning that the subject-matter of an application for trade mark registration, such as that lodged in the main proceedings, which relates to all the conceivable shapes of a transparent bin or collection chamber forming part of the external surface of a vacuum cleaner, is not a ‘sign’ within the meaning of that provision and therefore is not capable of constituting a trade mark within the meaning thereof.

[Signatures]

*

Language of the case: English.