JANUARY 2014: GENERAL COURT OF THE EUROPEAN UNION - 12 NOVEMBER 2013 - CASE T-245/12 – GAMESA EÒLICA VERSUS OHIM (ENERCON) – "THE COLOUR GREEN"
Enercon obtained the registration of the Community trade mark corresponding to this sign:
This trade mark covers "wind energy converters, and parts therefor" in Class 7.
It was identified in the application form as a "colour mark". A description of the colours applied for was provided by means of a colour code.
Gamesa Eòlica filed an application for the declaration of invalidity of this trade mark, arguing that it had no distinctive character.
The Cancellation Division of the OHIM allowed this application. With regard to the nature of the trade mark, it held that it describes the manner in which the colours registered may cover a wind turbine tower.
It also held that the colour green or a gradient of various shades of green cannot be registered for wind turbine towers as the Community trade mark must not constitute a barrier to national laws seeking to limit the visual impact of wind turbines or, on the contrary, with regard to the upper portion thereof, since wind turbines must be visible to aircraft.
The OHIM's Board of Appeal annulled this decision. It held in particular that the contested trade mark is a "two-dimensional figurative sign made up of colours, and not a colour mark," and that this mark is of "sufficiently distinctive character to the extent that it represents neither a wind turbine tower nor a colour mark”. It added that this trade mark was not descriptive and that there "was no evidence that the contested mark, as re-categorised, had been applied for in bad faith since the mark cannot prevent competitors from complying with national administrative rules”.
The General Court of the European Union annulled the Board of Appeal's decision.
It held in particular that:
- No rule obliged the contested trade mark proprietor to represent the contours of the sign by dotted lines in order to indicate that they are not protected even though that would be the most commonly used indicator;
- Therefore, the OHIM's Board of Appeal made an error of assessment by finding that the contested mark was not a colour mark but rather a two-dimensional figurative mark made up of colours;
- The Board of Appeal's decision was therefore based on a mistaken perception of the nature and characteristics of the mark at issue, which is sufficient to vitiate the entirety of its assessment;
This decision provides an opportunity to review the criteria for assessing the distinctive character of colours, i.e.:
- Save in exceptional cases, colours do not initially have a distinctive character, but may be capable of acquiring such character as a result of the use made of them in relation to the products or services covered by the Community trade mark application;
- Distinctiveness without any prior use is inconceivable save in exceptional circumstances, and particularly where the number of products or services for which the trade mark is applied is very restricted and the relevant market very specific;
- In assessing the potential distinctiveness of a given colour or fixed combination of colours as a trade mark, regard must be had to the general interest in not unduly restricting the availability of colours for other operators offering the same type of products or services as those for which the trade mark is being applied.