Zichtbaar doorzichtig
HvJ EG, 14 september 2006, Conclusie AG Léger, zaak C-321/03. Dyson Ltd tegen Registrar of Trade Marks. Voorstel voor prejudiciële antwoorden. (Nog geen Nederlandstalige versie beschikbaar).
In the present case the referring court makes reference to the Court for a preliminary ruling on two questions relating to Article 3(3) of the directive in order to determine whether, and if appropriate under what conditions, a functional feature which forms part of the appearance of a product is capable of acquiring a distinctive character as a result of the use which has been made of it.
Since 1993 Dyson has manufactured and marketed the Dual Cyclone vacuum cleaner, a bagless cleaner in which the dirt and dust is collected in a transparent plastic container forming part of the machine. On 10 December 1996 Notetry Ltd, a company owned by James Dyson, lodged an application for registration: ‘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’.
The hearing officer (Registrar of Trade Marks) rejected that application on the ground that the sign in question was devoid of any distinctive character within the meaning. He also stated that the transparent collection chamber ultimately served to designate the kind and the intended purpose of the product in question, which was an absolute ground for refusal of registration. Dyson brought an appeal against that decision at the High Court of Justice.
The High Court of Justice (England & Wales), Chancery Division decided to stay the proceedings and to make reference to the Court of Justice for a preliminary ruling on the following questions:
1- In a situation where an applicant has used a sign (which is not a shape) which consists of a feature which has a function and which forms part of the appearance of a new kind of article, and the applicant has, until the date of application, had a de facto monopoly in such articles, is it sufficient, in order for the sign to have acquired a distinctive character within the meaning of Article 3(3) of Directive 89/104/EEC, that a significant proportion of the relevant public has by the date of application for registration come to associate the relevant goods bearing the sign with the applicant and no other manufacturer?
2- If that is not sufficient, what else is needed in order for the sign to have acquired a distinctive character and, in particular, is it necessary for the person who has used the sign to have promoted it as a trade mark?’
In Libertel relating to the registration of the colour orange as a trade mark for telecommunications goods and services, the Court considered that in order to consider those questions it was necessary as a preliminary matter to determine whether a colour per se was capable of constituting a trade mark for the purposes of Article 2 of the directive. (23)
I believe that this reasoning can be legitimately applied to the present case. Like the Commission, I consider that in order to consider the questions raised by the High Court of Justice it is necessary as a preliminary matter to determine whether a functional feature like that at issue in the main proceedings is capable of constituting a trade mark for the purposes of Article 2 of the directive.
Contrary to the arguments made by the applicant and the United Kingdom Government, I consider that a functional feature which forms part of the appearance of a product does not fulfil the necessary conditions under that provision to constitute a trade mark since it does not, in my view, constitute a sign capable of being represented graphically and capable of distinguishing the goods or services of one undertaking from those of other undertakings.
In the light of the foregoing, I propose that the Court give the following answers to the questions asked:
1- A visible functional feature of a product which is capable of taking on a multitude of appearances does not fulfil the necessary conditions to constitute a trade mark within the meaning 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 since it does not constitute a sign capable of being represented graphically and capable of distinguishing goods and services of one undertaking from those of other undertakings.
2- In any event, Article 3(1)(e), second indent, of First Council Directive 89/104/EEC precludes the registration as a trade mark of a visible functional feature of a product.’
Lees de conclusie hier.
