Court of Justice of the European Communities (including Court of First Instance Decisions)

ORDER OF THE COURT (Sixth Chamber)
12 October 2004 (1)

v

THE COURT (Sixth Chamber),

makes the following

Order

1. In the case at issue in the main proceedings, an action has been brought before the national court by Dyson Ltd ('Dyson') against the decision of the Registrar of Trade Marks, which is the United Kingdom authority competent for the registration of trade marks, refusing to register two marks in respect of '[a]pparatus for cleaning, polishing and shampooing floors and carpets; vacuum cleaners; carpet shampooers; floor polishers; parts and fittings for all the aforesaid goods'.
2. Each of the trade marks applied for is described as follows: 'The mark consists of a transparent bin or collection chamber forming part of the external surface of a vacuum cleaner as shown in the representation'. Attached to that description is a representation of one or the other of the two versions of the cyclonic cleaner manufactured and marketed by Dyson.
3. It is clear from the order for reference that those two marks rest entirely on the fact that they are made from clear as opposed to opaque or coloured plastic.
4. The High Court is unsure whether at the date of the application, in 1996, those marks had acquired a distinctive character through use. It therefore made the present reference to the Court for a preliminary ruling and, by its questions, has asked the Court for the correct interpretation of Article 3(3) of the 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).
5. Although the issue was not raised by the national court, the Commission of the European Communities, which has lodged observations in the present case, submits that Dyson's applications to the Registrar of Trade Marks sought trade mark registration of a concept, namely that of a clear collection chamber for a vacuum cleaner, irrespective of the shape of the chamber. In the Commission's view, a concept is not a sign within the meaning of Article 2 of Directive 89/104 as it is not capable of perception by one of the five senses, and, hence, cannot be registered as a trade mark.
6. In any event, according to the Commission, the graphic representation of the 'signs' whose registration is sought by Dyson in the case at issue in the main proceedings do not meet the requirement of being capable of graphic representation which is 'clear, precise, self-contained, easily accessible, intelligible, durable and objective' set out by the Court in Case C-273/00 Sieckmann [2002] ECR I-11737. The 'signs' at issue are in fact a feature of the products in question which does not correspond to any particular shape but may have different shapes.
7. The Commission thus proposes that the Court answer the national court's questions by stating that the scope of Article 2 of Directive 89/104 is limited to signs which may be perceived by one of the human senses.
8. Inasmuch as the Court will in all likelihood have to take into consideration the signs whose registration is at issue in the main proceedings in order to provide a useful answer to the questions referred by the national court, that may lead it to verify at the outset, as the Commission proposes, whether those signs are capable of constituting trade marks, that is whether they satisfy the requirements of Article�2 of Directive 89/104 and, hence, to interpret that provision.
9. Moreover, by application received at the Registry of the Court of First Instance of the European Communities on 10 September 2002, registered as Case T-278/02, Dyson brought an action for annulment of the decision of the First Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) ('OHIM') refusing to register a trade mark in respect of '[a]pparatus for cleaning, polishing and shampooing floors and carpets; vacuum cleaners; carpet shampooers; floor polishers; parts and fittings for all the aforesaid goods'.
10. In the application form for registration, Dyson described the mark as consisting of 'a transparent bin or collection chamber forming part of an external surface of a vacuum cleaner'.
11. The examiner and, later, the OHIM Board of Appeal refused the application for registration of the sign as a Community mark on the basis of Articles 4 and 7(1)(a) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L�11, p.�1).
12. Dyson's action is founded on infringement of Article 7(1)(a) of Regulation No 40/94, which provides that '[t]he following shall not be registered: ... signs which do not conform to the requirements of Article 4'. Thus, when examining that action, the Court of First Instance will be called upon to interpret Articles 4 and 7(1)(a) of Regulation No�40/94.
13. First, it is apparent that Dyson is seeking registration of the same sign as a trade mark in the dispute in the proceedings giving rise to Case C-321/03 pending before the Court of Justice and in Case T-278/02 pending before the Court of First Instance.
14. Second, it is common ground that Article 2 of Directive 89/104 and Article 4 of Regulation No�40/94, which are drafted in almost identical terms, must be given and are in fact given the same interpretation.
15. Therefore, the Court of Justice and the Court of First instance are seised of cases raising the same issue of interpretation within the meaning of the third paragraph of Article 54 of the State of the Court of Justice.
16. In those circumstances, it is in the interests of the proper administration of justice to stay the present proceedings until such time as the Court of First Instance has delivered its final judgment in Case T-278/02, in accordance with the third paragraph of Article 54 of the Statute of the Court of Justice.




On those grounds, the Court (Sixth Chamber) orders:
The proceedings in Case C-321/03 are stayed until such time as the Court of First Instance has delivered its final judgment in Case T-278/02.

Signatures.

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1 - Language of the case: English.