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Court of Justice of the European Communities (including Court of First Instance Decisions) |
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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Sieckmann (Approximation of laws) [2002] EUECJ C-273/00 (12 December 2002) URL: http://www.bailii.org/eu/cases/EUECJ/2002/C27300.html Cite as: [2004] All ER (EC) 253, [2002] EUECJ C-273/00, [2003] 3 WLR 424, Case C-273/00, [2002] EUECJ C-273/, [2003] Ch 487, [2003] RPC 38, [2005] 1 CMLR 40 |
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JUDGMENT OF THE COURT
12 December 2002 (1)
(Trade marks - Approximation of laws - Directive 89/104/EEC - Article 2 - Signs of which a trade mark may consist - Signs capable of being represented graphically - Olfactory signs)
In Case C-273/00,
REFERENCE to the Court under Article 234 EC by the Bundespatentgericht (Germany) for a preliminary ruling in proceedings brought by
Ralf Sieckmann
on the interpretation of 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 (OJ 1989 L 40, p. 1),
THE COURT,
composed of: G.C. Rodríguez Iglesias, President, M. Wathelet, R. Schintgen, C.W.A. Timmermans (Presidents of Chambers), C. Gulmann, D.A.O. Edward, A. La Pergola, V. Skouris, F. Macken (Rapporteur), N. Colneric and J.N. Cunha Rodrigues, Judges,
Advocate General: D. Ruiz-Jarabo Colomer,
Registrar: D. Louterman-Hubeau, Head of Division,
after considering the written observations submitted on behalf of:
- Mr Sieckmann, by himself, Patentanwalt,
- the Austrian Government, by C. Pesendorfer, acting as Agent,
- the United Kingdom Government, by R. Magrill, acting as Agent, and D. Alexander, Barrister,
- the Commission of the European Communities, by K. Banks, acting as Agent, and W. Berg, Rechtsanwalt,
having regard to the Report for the Hearing,
after hearing the oral observations of Mr Sieckmann and the Commission at the hearing on 2 October 2001,
after hearing the Opinion of the Advocate General at the sitting on 6 November 2001,
gives the following
Relevant provisions
Community legislation
'... attainment of the objectives at which this approximation of laws is aiming requires that the conditions for obtaining and continuing to hold a registered trade mark are, in general, identical in all Member States; ... to this end, it is necessary to list examples of signs which may constitute a trade mark, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings; ...'.
'A trade mark may consist of any sign capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.'
'The following shall not be registered or if registered shall be liable to be declared invalid:
(a) signs which cannot constitute a trade mark;
(b) trade marks which are devoid of any distinctive character;
...'.
National legislation
'Any sign, particularly words, including personal names, designs, letters, numerals, acoustic signs and three-dimensional forms, including the shape of goods or of their packaging and other aspects of their presentation, including colours and colour combinations, which are capable of distinguishing the goods or services of one undertaking from those of other undertakings, may be protected as a trade mark.'
The main proceedings and the questions referred for a preliminary ruling
'Trade mark protection is sought for the olfactory mark deposited with the Deutsches Patent- und Markenamt of the pure chemical substance methyl cinnamate (= cinnamic acid methyl ester), whose structural formula is set out below. Samples of this olfactory mark can also be obtained via local laboratories listed in the Gelbe Seiten (Yellow Pages) of Deutsche Telekom AG or, for example, via the firm E. Merck in Darmstadt.
'The trade mark applicant hereby declares his consent to an inspection of the files relating to the deposited olfactory mark methyl cinnamate pursuant to Paragraph 62(1) of the Markengesetz and Paragraph 48(2) of the Markenverordnung (Trade Mark Regulation).'
'(1) Is Article 2 of the First Council Directive of 21 December 1988 to approximate the laws of the Member States relating to trade marks (89/104/EEC) to be interpreted as meaning that the expression signs capable of being representedgraphically covers only those signs which can be reproduced directly in their visible form or is it also to be construed as meaning signs - such as odours or sounds - which cannot be perceived visually per se but can be reproduced indirectly using certain aids?
(2) If the first question is answered in terms of a broad interpretation, are the requirements of graphic representability set out in Article 2 satisfied where an odour is reproduced:
(a) by a chemical formula;
(b) by a description (to be published);
(c) by means of a deposit; or
(d) by a combination of the abovementioned surrogate reproductions?'
The first question
Observations submitted to the Court
Findings of the Court
The second question
Observations submitted to the Court
Findings of the Court
Costs
74. The costs incurred by the Austrian and United Kingdom Governments and by the Commission, which have submitted observations to the Court, are not recoverable. 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.
On those grounds,
THE COURT,
in answer to the questions referred to it by the Bundespatentgericht by order of 14 April 2000, hereby rules:
1. Article 2 of Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks must be interpreted as meaning that a trade mark may consist of a sign which is not in itself capable of being perceived visually, provided that it can be represented graphically, particularly by means of images, lines orcharacters, and that the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective.
2. In respect of an olfactory sign, the requirements of graphic representability are not satisfied by a chemical formula, by a description in written words, by the deposit of an odour sample or by a combination of those elements.
Rodríguez Iglesias
Timmermans
La Pergola
ColnericCunha Rodrigues
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Delivered in open court in Luxembourg on 12 December 2002.
R. Grass G.C. Rodríguez Iglesias
Registrar President
1: Language of the case: German.