Keywords
Summary

Keywords

1. Community trade mark - Appeal procedure - Appeal against a decision of the examiner remitted to the Board of Appeal - Jurisdiction of the Board of Appeal - Limits

(Council Regulation No 40/94, Arts 7 and 62(1))

2. Community trade mark - Decisions of the Office - Observance of the rights of the defence

(Council Regulation No 40/94, Art. 73)

3. Community trade mark - Definition and acquisition of a Community trade mark - Absolute grounds for refusal - Signs composed exclusively of a shape which results from the nature of the goods themselves - Sign used for bars of soap in a waisted bone shape with indentations - Refusal to register - Not permissible

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

4. Community trade mark - Definition and acquisition of a Community trade mark - Earlier registration of the trade mark in certain Member States - Effect

Summary

1. An appeal to a Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) seeking to have an examiner's refusal to register a Community trade mark on an absolute ground overturned places the Board, in the examination of the merits of the application for registration, in the position of the examiner. It follows that, under Article 62(1) of Regulation No 40/94 on the Community trade mark, the Board of Appeal is competent to reopen the examination of the application in the light of all the absolute grounds for refusal set out in Article 7 of that regulation, without being limited by the examiners reasoning. However, by raising of its own motion and a posteriori a formal irregularity not raised by the examiner, the Board of Appeal acted ultra vires. If the examiner had initially dismissed the application for registration as inadmissible owing to a formal irregularity, the applicant could have either appealed to the Board of Appeal or immediately made a fresh application for registration to the Office. The Board of Appeal thus deprived the applicant of that choice, and in particular of the second option, which would have enabled it to have a filing date earlier than that which it could obtain after the adoption of the examiner's decision to refuse registration on an absolute ground.

( see paras 26-27, 29-30 )

2. The principle of the protection of the rights of the defence, observance of which is required by Article 73 of Regulation No 40/94 on the Community trade mark, which provides that decisions of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) are to be based only on reasons on which the parties had an opportunity to present their comments, is infringed by a decision of a Board of Appeal of the Office which fails to accord the applicant an opportunity to express its views on the absolute grounds for refusal applied by the Board of Appeal of its own motion.

( see paras 40, 42, 47 )

3. Under Article 7(1)(e)(i) of Regulation No 40/94 on the Community trade mark, signs which consist exclusively of a shape which results from the nature of goods themselves are not to be registered. As regards registration of a three-dimensional trade mark applied for in respect of soaps, a shape which bends inwards along its length and has grooves which do not come about as a result of the nature of the product itself may not be refused registration where there are other shapes of soap bar in the trade without those features.

( see paras 54-56 )

4. In regard to an application for registration of a sign as a Community trade mark, the Office for Harmonisation in the Internal Market (Trade Marks and Designs) is not bound by registrations of the sign as a trade mark in other Member States. Having regard to the principle of the unitary character of the Community trade mark, registrations already made in the Member States are a factor which may only be taken into consideration, without being given decisive weight, for the purposes of registering a Community trade mark.

( see para 59, 61-62 )