ORANGE AND GREY NOT REGISTRABLE AS A CTM

On 9 July in Case T-234/01 Andreas Stihl AG & Co. KG v. OHIM the Court of First Instance of the European Communities (CFI) affirmed OHIM’s decision to reject an application to register as a Community trade mark a combination of two colours, orange and grey, with specified Pantone™ numbers, for a range of machines and tools in Class 7. The CFI accepted that in principle colours or combinations of colours could constitute a CTM to the extent that they were capable of distinguishing the goods or services of one undertaking from those of another, citing its earlier decision in Case T-316/00, Viking-Umwelttechnik v OHIM (“Green and grey”).
The CFI then went on to repeat its own formulation of the objection under Article 7(1)(b) CTMR, “devoid of distinctive character”. Such marks are those that do not permit the identification of the original of goods or services and thus do not permit the relevant public to repeat a positive purchase experience or to avoid a negative purchase experience when considering a subsequent purchase for the goods or services in question, see Case T-79/00 Rewe-Zentral v OHIM (LITE).

The CFI emphasised that Article 7(1)(b) does not distinguish between different types of marks but confirms its holding that the perception of the relevant public is not necessarily the same for all types of marks; in particular, there is a big difference between colour marks and word marks because colour marks are not normally used to identify origin, see the Viking case. The CFI agreed with the OHIM Board of Appeal that grey is often used as the colour of metal or plastic of which tools are commonly composed. When it comes to the combination of grey and orange, the mark as represented was a pure colour combination without reference to where precisely or how precisely it would be applied to the surface of a product or its packaging, without providing a concrete example of the “distribution” of the two colours. The CFI also stated that the particular combination of colour would not be recognised as a sign because the distribution of the two components was not given systematically on the products and could be used in very numerous different arrangements, which would not permit the consumer to apprehend and memorise a particular combination that would then be utilised to re-iterate and repeat a purchase experience, in an immediate and certain manner. The relevant public would not consider this particular colour combination as a sign indicating that thus-coloured products have the same provenance of a particular enterprise, but rather would consider it to be a simple element of finish of the products. Thus rejection under Article 7(1)(b) was amply justified.

A strange feature of this decision is that it made no mention of the European Court of Justice’s recent landmark decision in Case C-104/01 Libertel.
The Andreas Stilh decision is available in all EU official languages except English and Italian. This article has been prepared from a note by Tibor Gold.