There was a colourful ruling of the Court of First Instance of the European Communities (CFI) today in Case T‑137/08, BCS SpA v Office for Harmonisation in the Internal Market, Deere & Company, an appeal against the decision of the Second Board of Appeal not to invalidate Deere's Community trade mark.
Three years later BCS SpA sought a declaration of invalidity in respect of all the goods protected by the registration of the mark, maintaining that it was devoid of distinctive character when the application was filed and that there had been insufficient proof of distinctive character acquired through use. A second ground of attack that the mark had been registered despite the existence of an Italian non-registered trade mark, also consisting of a combination of the colours green and yellow. Said BCS, the use of that unregistered mark before 1996 in relation to ‘agricultural machines, in particular farm tractors, small tractors, land tractors and trailers’ in ten EU member states gave it the right to prohibit the use of a subsequent trade mark consisting of those colours.
The Cancellation Division was unimpressed with this assault on the mark's validity and dismissed the application for the declaration. In its view BCS had not shifted the burden of undermining the evidence submitted by Deere of distinctiveness acquired through use. Further, even though BCS had shown that it had used the colours yellow and green on various types of agricultural machinery before the filing date of the disputed mark, it had not proven that, before that date, that sign was perceived as an indication of commercial origin by the relevant public in the territories concerned. The Board of Appeal dismissed BCS's appeal, so the company tried its luck with the CFI -- but to no avail, the court dismissing BCS's claims and ordering it to pay costs.
The CFI carefully reviewed the decision of the Board of Appeal and its approach to the evidence before it, concluding that BCS's case was plainly deficient. Among other things, the CFI reminded the litigants that the burden on Deere of establishing distinctive character was not as heavy as BCS would have liked:
"39 ... lthough it must be proved that the disputed mark has acquired distinctive character throughout the Community (see, to that effect, Case C-25/05 P Storck v OHIM  ECR I-5719, paragraph 83), the same types of evidence do not have to be provided in respect of each Member State".
"73 First, it is common ground between the parties that the applicant ceased, at least from 1973 to 1982, to use the combination of the colours green and yellow on its goods in Italy. Although it would have been possible for the applicant to acquire a non-registered right in its sign through the use from 1983 to 1996 it did not do so. It is also apparent from the findings ... that it did not use the combination of the colours green and yellow in a consistent and uniform manner. On the contrary, it used a number of shades of green and yellow as well as a combination of the colours green and white.The IPKat thinks this decision is clearly correct, but also feels some sympathy with BCS who, having previously used green and yellow livery themselves, must have felt a little miffed at Deere coming along -- as they were entitled to do -- and gaining the upper hand through a valid trade mark registration. However, if your competitor gets the green and yellow, isn't it better to spend money on teaching the public to recognise a new set of colours than to spend five years in pointless and fruitless litigation? Merpel wonders about the para.77 point: could it not be argued that, if the respondents still retained a perception of marks for a whole decade, those marks must have made a really powerful impression upon them?
74 It follows that the suspension of use of the combination of the colours green and yellow as a mark and the varying use of those colours were liable to prevent the public from systematically associating the applicant with a specific combination of colours.
75 Secondly, the Board of Appeal was fully entitled to regard the evidential value of declarations made by former employees of the applicant as questionable. ... those declarations were not corroborated by other evidence in the file and they were even partially disproved.
76 Thirdly, the Board of Appeal cannot be criticised for having found that the market survey submitted by the applicant was not persuasive. ... the Board of Appeal was fully entitled to point out ... that the participants in that survey, contrary to that carried out by [Deere], had not been asked for their reasons for giving a particular response and had not been shown a different image in a different colour in order to ensure that they did not recognise the image because of criteria other than the colour. Those facts are not disputed by the applicant. Consequently, it cannot be ascertained whether, at the end of the applicant’s survey, the participants recognised the applicant’s goods solely as a result of their colours and not as a result of their shape or other factors.
77 It must also be stated that the Board of Appeal was fully entitled to find that the evidential value of the applicant’s survey was noticeably lower than that of the survey submitted by [Deere], since the respondents in the applicant’s survey had been asked to recreate from memory their perception of the marks 10 years previously".
Yellow and Green here
Green and Black here
Test yourself for colourblindness here
Are cats colourblind? Click here