Keywords
Summary

Keywords

1. Community trade mark — Appeals procedure — Appeals before the Community Courts — Application made at the hearing to restrict the list of goods and services contained in the trade-mark application refused — Interpreted as partial withdrawal — Alteration of the factual or legal context of the dispute heard by the Board of Appeal — Excluded — (Rules of Procedure of the Court of First Instance, Art. 135(4); Council Regulation No 40/94, Art. 44; Commission Regulation No 2868/95, Art. 1, Rule 13)

2. Community trade mark — Definition and acquisition of a Community trade mark — Absolute grounds for refusal — Marks devoid of distinctive character — Three-dimensional mark — Ovoid tablet — (Council Regulation No 40/94, Art. 7(1)(b))

Summary

1. When, in an action brought against a decision of a Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) upholding refusal of an application for a Community trade mark, an application to restrict the list of goods or services in the trade-mark application is made orally at the hearing, it cannot be considered to be an application for amendment within the meaning of Article 44 of Regulation No 40/94 on the Community trade mark or Rule 13 of Regulation No 2868/95 implementing Regulation No 40/94, since it does not comply with the specific detailed rules laid down by those provisions. However, such an application may be interpreted as meaning that the applicant has withdrawn its action in so far as it sought annulment of the contested decision in respect of products or services other than those retained in the application for limitation.

Although such partial withdrawal is not, as such, contrary to the prohibition in Article 135(4) of the Rules of Procedure on changing, before the Court of First Instance, the subject-matter of the proceedings before the Board of Appeal, it none the less does not affect the principle that the Court ' s task is to review the legality of the Board of Appeal ' s decision. The review must be carried out in the light of the factual and legal context of the dispute as it was brought before the Board of Appeal. It follows that a party cannot, by withdrawing its claims in part, alter the matters of fact and law on the basis of which the legality of the Board of Appeal ' s decision is examined.

see paras 13-16

2. Under Article 7(1)(b) of Regulation No 40/94 on the Community trade mark " trade marks which are devoid of any distinctive character" are not to be registered. As regards, in that connection, the registration claimed for dishwasher preparations of a three-dimensional mark presented in the form of a speckled ovoid tablet, colour not being claimed, the mark is not distinctive, since it is closely related to certain basic commonly-used shapes on which it is a variation and since the speckles on the tablet are not such either as to confer distinctive character on the mark applied for. As a result, with respect to the overall impression produced by the appearance of the tablet concerned, the mark applied for is not such as to enable the relevant public, on the occasion of a subsequent acquisition, to recognise it and make a further purchase, if the experience proves to be positive, or to avoid a further purchase, if it proves to be negative.

see paras 54, 56-59