Henkel had applied for a red and white rectangular tablet with an oval blue centre as a figurative Community Trade Mark for dishwashing preparations and rinsing agents for laundry use in 1998. Henkel?s application was rejected by OHIM on the grounds that the mark lacked distinctiveness. Henkel appealed to the Court of First Instance (CFI) seeking annulment of the OHIM decision, but the CFI dismissed the appeal holding that the figurative mark applied for was devoid of any distinctive character according to Art 7(b) of the Council Regulation (EC) No. 40/94. Henkel then appealed to the ECJ to set aside the judgment of the CFI arguing that the CFI erred both in law and in fact while assessing the distinctiveness of the mark in question, and that the date for considering the application was wrong resulting in an unregistrable mark.

On the question of interpretation of law, the ECJ agreed with the CFI that an assessment of distinctiveness of any mark must look at the overall impression of such mark. While analysing the mark in question, the ECJ found that:

  • a rectangular shape was too obvious for a shape to be registrable;
  • the three colours in the mark were only basic colours which could not attract the consumers attention and gave no distinctive character to the mark applied; and
  • words accompanying marks in general were not significant enough to distinguish the mark.

Therefore, the three-coloured figurative mark did not enable the average consumer of such goods to distinguish Henkel products from those of competitors, rendering the mark devoid of distinctive character. On the question of applying the law to facts, the ECJ held that there was no inaccuracy committed by the CFI as the CFI had exclusive jurisdiction to make findings of fact and to appraise the facts including characteristics of the relevant public and consumers degree of attention, perception or attitude.

In respect of the last argument, Henkel argued that if the CFI had considered the application at the date on which it was made, the figurative mark would have been registrable, as it was the first company to launch the tablet form of the product and, at the filing date, consumers did not have the slightest difficulty in associating the products with its mark. However, the ECJ ruled that distinctiveness would not be affected by the number of similar tablets marketed. As such, the appeal was dismissed.