General Court considers whether light blue colour mark is sufficiently distinctive to be registered as an EU trade mark

Adding to the increasingly abundant case law on unconventional EU trade marks (EUTMs), in a recent decision (Case T-168/21, only available in French and German) rendered earlier this month, the General Court had to consider whether the colour mark below (described as light blue: RAL 5012) could be sufficiently distinctive to be registered as an EUTM for goods in Classes 6, 9, and 17:

The judgment essentially reiterates what has been known for a long time, that is: colour marks can be registered on an exceptional basis. The Court also recalled that distinctiveness needs to be evaluated not in abstract terms, but rather having regard to the average consumers of the concerned goods/services (and in this case the EUIPO had failed to identify them properly).

Background

In 2019, Magnetec GmbH (the applicant) sought to register the above colour mark as an EUTM.

The application concerned goods in Classes 6 (Alloys; non-ferrous metal alloys; alloys in the form of rings for sheathing motor cables; common metal alloys; common metals and their alloys, including stainless steel; iron alloys; sheath of metal for electric cables [sheaths]; unwrought and semi-wrought common metals and their alloys, in particular magnetic materials with high initial permeability, high saturation permeability or high maximum permeability, including alloys and magnetic materials which exhibit an amorphous, partially amorphous or polycrystalline structure by rapid cooling from cast iron), 9 (Magnetic cores; inductive components for the derivation of wave currents; inductive components for motor protection; motor cables and electrical conductors; power line protection sheaths; protective covers for electronic cables; bypass reactors; parts of physical, chemical, optical and electrotechnical apparatus, included in class 9), and 17 (Insulating sheaths for the electrical wrapping of cables; insulating sheaths for the electrical wrapping of wires) of the Nice Classification.

In 2019, the EUIPO examiner rejected the application on the basis of Article 7(1)(b) of Regulation 2017/1001 (EUTMR).

Subsequently, the applicant appealed and limited the goods applied for.

Initially, the EUIPO Fourth Board of Appeal (the board) dismissed the limitation as inadmissible on the ground that the clarifications made by the applicant to the wording of the products “blurred the boundaries” between raw materials and finished products did not satisfy the conditions of Articles 33 and 49(1) EUTMR.

Nonetheless, the board eventually decided to refer the case back to the EUIPO Examiner, finding that this had not taken into account the applicant's request that the intrinsic distinctive character of the applicant’s mark be examined first, given that the applicant had decided not yet to invoke the benefit of the distinctive character acquired through the use of that mark within the meaning of Article 7(3) of the EUTMR.

In any event, the board found that the claimed colour would be devoid of any distinctive character for the goods claimed. On the one hand, as regards the relevant public, it took the view that magnetic cores falling within Class 9 are aimed at a specialized public demonstrating high professional knowledge in the electrotechnical field. On the other hand, that would not be the case for goods falling within Classes 6 and 17, since they are aimed at a wider public.

The General Court’s judgment

The applicant relied on two pleas in law: first, infringement of Article 49(1) of the EUTMR, read in conjunction with Article 33 of that regulation; secondly, infringement of Article 7(1)(b) of the same regulation.

The present analysis only focuses on the second plea, namely, infringement of Article 7(1)(b).

Infringement of Article 7(1)(b) EUTMR

In the present case, the board had found that the goods in Class 9 covered by the applicant’s mark were magnetic cores for electromagnetic and electrical shielding. These are special components for installation in larger machines or (wind power) plants, and are used in a way that is not visible to the user. On the basis of those considerations, the board had concluded that the assessment of the distinctive character of the mark applied for those goods (except goods in Class 6) should be based on the perception of the specialist public dealing with machines or installations throughout the European Union, which would have a high level of technical expertise in the field of electrical engineering. As regards to goods in Class 6, the board found that, “the goods [will] be of interest to a broader range of customers”.

While the board had considered that the goods in Class 6 would not be aimed at a public as limited as the magnetic cores in Class 9, those considerations did not make it clear and unequivocal whether those goods were aimed at the general public or at a less limited professional audience than the magnetic cores.

The applicant claimed that, as regards the relevant public, the board had made a decision only in relation to Class 6 “metallic alloys” and Class 17 “insulating covers”, and not to the public targeted by the other Class 6 goods.

The EUIPO, in contrast, submitted that the board had upheld the Examiner's decision, who had already pointed out in his letter of 19 March 2019 that the goods were intended for commercial customers. However, those considerations did not make it clear and unequivocal whether the goods in Class 6 would be intended for a broader range of commercial customers than those addressed by magnetic cores in Class 9, or whether they would be aimed at the general public. As a result, the board’s position, according to which the goods in Class 6 were of interest to a broader public, would not indicate clearly and unequivocally the public covered by those goods.

The Court considered that the board had not defined the relevant public for other Class 9 goods covered by the applicant’s mark, namely: “Inductive components for motor protection; motor cables and electric conductors; protection devices for power lines; protective sleeves for electronic wires; shunt reactors; Parts of physical, chemical, optical and electrotechnical devices, included in Class 9”.

Therefore, it could not be called into question that the board only defined the relevant public in relation to magnetic cores, and therefore it followed that the board had breached its obligation to state reasons under the first sentence of Article 94(1) EUTMR.

The contested decision was therefore annulled in its entirety.

Comment

As stated, the decision suggests that colour marks are difficult to register and are regarded as not intrinsically distinctive. This said, the key take-away is that distinctiveness needs to be evaluated not in abstract terms, but rather having regard to the average consumers (and in this case the EUIPO failed to do so in appropriate fashion).