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Language of document : ECLI:EU:T:2011:575

Case T-508/08

Bang & Olufsen A/S

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

(Community trade mark – Application for a three-dimensional Community trade mark – Representation of a loudspeaker – Compliance by OHIM with a judgment annulling a decision of one of its Boards of Appeal – Article 63(6) of Regulation (EC) No 40/94 (now Article 65(6) of Regulation (EC) No 207/2009) – Absolute ground for refusal – Sign which consists exclusively of the shape which gives substantial value to the goods – Article 7(1)(e)(iii) of Regulation No 40/94 (now Article 7(1)(e)(iii) of Regulation No 207/2009))

Summary of the Judgment

1. Community trade mark – Appeals procedure – Action before the European Union Courts – Implementation of a judgment annulling a decision adopted by a Board of Appeal – New examination of the appeal – Examination of the facts of the Office’s own motion

(Council Regulation No 40/94, Arts 7(1), 38(3), 63(6) and 74(1); Commission Regulation No 216/96, Art. 1d(1))

2. Community trade mark – Definition and acquisition of the Community trade mark – Absolute grounds for refusal – Signs consisting exclusively of shape giving substantial value to the goods – Exception – Acquisition of distinctive character through use

(Council Regulation No 40/94, Art. 7(1)(b) to (e), and (3))

3. Community trade mark – Definition and acquisition of the Community trade mark – Absolute grounds for refusal – Signs consisting exclusively of shape giving substantial value to the goods

(Council Regulation No 40/94, Art. 7(1)(e)(iii))

1. It is not for the Court to issue directions to the Office for Harmonisation in the Internal Market (Trade Marks and Designs); it is for the latter to give due effect to the grounds and operative part of the Court’s judgments.

In that context, Article 1d(1) of Regulation No 216/96 laying down the rules of procedure of the Boards of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs), as amended, provides, in relation to the referral of a case following a ruling of the Courts of the Union, that if, pursuant to Article 63(6) of Regulation No 40/94 on the Community trade mark, the measures necessary to comply with a judgment of the Courts of the Union annulling all or part of a decision of a Board of Appeal or of the Grand Board of OHIM include re-examination by the Boards of Appeal of the case which was the subject of that decision, the Presidium is to decide if the case is to be referred to the Board which adopted that decision, or to another Board, or to the Grand Board of OHIM.

In that regard, even if a sign, the object of an application for a Community trade mark, were to be considered by the Court, contrary to the decision reached by OHIM, not to be covered by one of the absolute grounds for refusal referred to in Article 7(1) of Regulation No 40/94, the annulment by the Court of the OHIM decision refusing registration of that mark would necessarily lead OHIM, which is required to give due effect to the grounds and operative part of the Court’s judgment, to reopen the procedure for the examination of the mark in question and to reject it where it considers that the sign in question is covered by another absolute ground for refusal referred to in that provision.

Pursuant to Article 74(1) of Regulation No 40/94, when considering the absolute grounds for refusal, OHIM is required to examine of its own motion the relevant facts which may lead it to apply an absolute ground for refusal. If OHIM finds that there are facts justifying the application of an absolute ground for refusal, it is required to inform the applicant for registration thereof and to allow it the opportunity of withdrawing or amending the application or of submitting its observations, pursuant to Article 38(3) of Regulation No 40/94.

(see paras 31-34)

2. A sign caught by Article 7(1)(e) of Regulation No 40/94 on the Community trade mark can never acquire distinctive character for the purposes of Article 7(3) of the regulation through the use made of it, although that possibility exists, according to that last provision, for signs covered by the grounds for refusal provided for in Article 7(1)(b) of Regulation No 40/94 and in Article 7(1)(c) and (d) of that regulation.

Consequently, if the examination of a sign under Article 7(1)(e) of Regulation No 40/94 leads to the conclusion that one of the criteria mentioned in that provision is met, this results in a release from examination of the sign under Article 7(3) of the regulation, since registration of the sign in such circumstances is clearly impossible. That release explains the advantage of undertaking a prior examination of the sign under Article 7(1)(e) of Regulation No 40/94 where several of the absolute grounds for refusal provided for in paragraph 1 may apply, although such a release may not be interpreted as implying that there is an obligation to examine that sign first under Article 7(1)(e) of Regulation No 40/94.

(see paras 43-44)

3. A three-dimensional mark which is the shape of a loudspeaker composed of a vertical column in the shape of a ‘pencil’, to which a long rectangular panel is fixed on one side, the point of the ‘pencil’ touching a flat base, of which registration is sought for ‘Electric and electronic apparatus and appliances for analogue, digital or optical reception, processing, reproduction, regulation or distribution of sound signals, loudspeakers’ and for ‘Music furniture’, in Classes 9 and 20 respectively within the meaning of the Nice Agreement, consists exclusively of the shape which gives substantial value to the goods within the meaning of Article 7(1)(e)(iii) of Regulation No 40/94 on the Community trade mark.

The design, for those goods, is an element which will be very important in the consumer’s choice even if the consumer also takes other characteristics of the goods into account. The shape reveals a very specific design which is an essential element of the branding of the proprietor’s mark and increases the appeal of the product at issue, that is to say, its value.

The fact that the shape is considered to give substantial value to the goods does not preclude other characteristics of the goods, such as the technical qualities, from also conferring considerable value on the goods at issue.

(see paras 73-74, 76-77)