JUDGMENT OF THE COURT
20 September 2001 (1)
(Appeal - Admissibility - Community trade mark - Regulation (EC) No 40/94 - Absolute ground for refusal to register - Distinctive character - Marks consisting exclusively of descriptive signs or indications - BABY-DRY)
In Case C-383/99 P,
Procter & Gamble Company, established in Cincinnatti (United States), represented by T. van Innis, avocat, with an address for service in Luxembourg,
APPEAL against the judgment of the Court of First Instance of the European Communities (Second Chamber) of 8 July 1999 in Case T-163/98 Procter & Gamble v OHIM (BABY-DRY)  ECR II-2383, seeking to have that judgment set aside in so far as the Court of First Instance ruled that the First 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 adopting its decision of 31 July 1998 (Case R 35/1998-1)
the other party to the proceedings being:
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by O. Montalto and E. Joly, acting as Agents, with an address for service in Luxembourg,
defendant at first instance
composed of: G.C. Rodríguez Iglesias, President, C. Gulmann, M. Wathelet and V. Skouris (Presidents of Chambers), J.-P. Puissochet (Rapporteur), P. Jann, L. Sevón, R. Schintgen, F. Macken, N. Colneric and S. von Bahr, Judges,
Advocate General: F.G. Jacobs,
Registrar: D. Louterman-Hubeau, Head of Division,
having regard to the Report for the Hearing,
after hearing oral argument from the parties at the hearing on 30 January 2001, at which Procter & Gamble Company was represented by T. van Innis and by F. Herbert, avocat, and the Office for Harmonisation in the Internal Market (Trade Marks and Design) by O. Montalto and E. Joly,
after hearing the Opinion of the Advocate General at the sitting on 5 April 2001,
gives the following
Regulation No 40/94
1. The following shall not be registered:
(a) signs which do not conform to the requirements of Article 4;
(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;
2. Paragraph 1 shall apply notwithstanding that the grounds of non-registrability obtain in only part of the Community.
3. Paragraph 1(b), (c) and (d) shall not apply if the trade mark has become distinctive in relation to the goods or services for which registration is requested in consequence of the use which has been made of it.
Following the examination as to the allowability of the appeal, the Board of Appeal shall decide on the appeal. The Board of Appeal may either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department fo further prosecution.
Facts of the case
The contested judgment
Admissibility of the appeal
Arguments of the parties
Findings of the Court
An appeal may be brought before the Court of Justice, within two months of the notification of the decision appealed against, against final decisions of the Court of First Instance and decisions of that Court disposing of the substantive issues in part only or disposing of a procedural issue concerning a plea or lack of competence or inadmissibility.
Such an appeal may be brought by any party which has been unsuccessful, in whole or in part, in its submissions. ...
The Court may at any time of its own motion consider whether there exists any absolute bar to proceeding with a case or declare, after hearing the parties, that the action has become devoid of purpose and that there is no need to adjudicate on it; it shall give its decision in accordance with Article 91(3) and (4) of these Rules.
Merits of the appeal
Arguments of the parties
- there is nothing about the way in which the sign is presented nor does it possess any additional features such as to cause it to be anything other than solely descriptive;
- the sign alludes to an essential quality of the goods, and not a secondary quality or one that is not specific to them;
- that allusion is clear to potential consumers of the goods.
Findings of the Court
48. Under Article 69(2) of the Rules of Procedure of the Court of Justice, which applies to appeals 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 Procter & Gamble has applied for costs against the OHIM and the OHIM has been unsuccessful, the latter party must be ordered to pay the costs both at first instance and on appeal.
On those grounds,
1. Annuls the judgment of the Court of First Instance of 8 July 1999 in Case T-163/98 Procter & Gamble v OHIM (BABY-DRY), in so far as it found that the First Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) did not infringe Article 7(1)(c) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark in adopting its decision of 31 July 1998 (Case R 35/1998-1);
2. Annuls the decision of the First Board of Appeal of the Office for Harmonisation in the Internal market (Trade Marks and Designs) of 31 July 1998 (Case R 35/1998-1) in so far as it refused the application for registration of BABY-DRY as a trade mark on the basis of Article 7(1)(c) of Regulation No 40/94;
3. Orders the Office for Harmonisation in the Internal Market (Trade Marks and Designs) to pay the costs both at first instance and on appeal.
Delivered in open court in Luxembourg on 20 September 2001.
R. Grass G.C. Rodríguez Iglesias
1: Language of the case: French.