Colour combination position trade mark not distinctive

The consistent case law of the EU courts on the inherent distinctiveness of colour marks is very restrictive and currently challenged by INTA, MARQUES and OMV in appeal proceedings before the General Court (IPKat here). This court confirmed the restrictive approach lately in a decision concerning four colour combination position trade marks.

Background

On 30 September 2019, Väderstad Holding AB (‘Väderstad’) filed the following trade mark applications with the European Union Intellectual Property Office (‘EUIPO’):

EUTM no. 018131019

EUTM no. 018131026

EUTM no. 018131034

EUTM no. 018131030

They were filed as ‘position marks’ and accompanied by the following description:

The trade mark consists of the colours red ‘[PMS 186]’, black ‘[PMS Black]’ and yellow ‘[PMS 7549]’ applied to the vehicle as shown. The shape bordered by dotted lines is intended to show the position of the trade mark and does not form part of the trade mark, and no exclusive right is sought for the shape of the vehicle itself.

The applications covered agricultural, gardening and forestry goods in classes 7 and 12 such as ‘agricultural machines’ and ‘tractors for agricultural purposes’.

The EUIPO rejected the applications for lacking distinctive character (Art. 7(1)(b) EUTMR).

The EUIPO’s Board of Appeal (‘BoA’) dismissed Väderstad’s appeals. It found that the trade marks were not sufficiently represented (Artt. 4 and 7(1)(a) EUTMR) with respect to those goods, which were not depicted in the marks’ representations. For the remaining goods (namely ‘seed drills’, ‘agricultural implements for seedbed preparation, levelling and reconsolidation of soil’ and ‘planters’), the trade marks lacked distinctive character (Art. 7(1)(b) EUTMR).

Väderstad appealed to the General Court and limited its trade marks to the goods for which they had been found to be sufficiently represented but lacked distinctiveness.

The General Courts’s decision

The General Court dismissed the appeals (cases T-361/23 to T-364/23).

Subject matter of the dispute

The judges clarified that it cannot take the limitation of Väderstad’s trade marks into account because the Court may not annul or alter the BoA’s decisions on grounds, which come into existence subsequent to their adoption.

Instead, the General Court interpreted the limitation of the trade marks as a partial withdrawal of the appeals against the BoA’s decisions. The appeals were deemed limited to the remaining goods of the trade marks after their restriction (i.e. ‘seed drills’, ‘agricultural implements for seedbed preparation, levelling and reconsolidation of soil’ and ‘planters’).

Such an interpretation of Väderstad’s limitation was possible only because Väderstad merely cancelled terms but did not alter existing ones. An alteration might have an effect on the examination of the trade marks in question, which would be tantamount to changing the subject matter of the proceedings and would not have been permissible according to settled case law.

As a consequence, Väderstad’s appeals were limited to the question whether the signs lacked distinctive character (Art. 7(1)(b) EUTMR).

Distinctiveness

For the purpose of assessing the distinctiveness of the trade marks, the relevant public was considered to be farmers in the EU with a high level of attention.

First, the General Court found that the case law developed for colour and colour combination marks also applied to colour combination position marks. Therefore, the BoA was fully entitled to consider the limited availability of colours and that colours are, in principle, not inherently distinctive. They are commonly and widely used to advertise and market goods and services without conveying any specific message.

Väderstad had submitted an affidavit from the Verband Deutscher Maschinen- und Anlagenbau e.V. (Association of the German Engineering Industry). The affidavit stated that it was common and established practice for manufacturers of agricultural equipment in Europe to use specific colour patterns on their agricultural equipment and that this practice was known to farmers.

The General Court did not consider the affidavit sufficient to prove inherent distinctiveness because it did not provide information on how the relevant public perceived the colours of the marks as positioned on the goods.

For the same reason, the judges deemed examples of colour use by other agricultural equipment manufacturers to be irrelevant.

Eventually, the General Court confirmed the BoA’s findings that the combination of the colours red, yellow and black was a simple variant of colour combinations used in the agricultural sector. The fact that colours are customarily used for the goods means that they are less capable of indicating the commercial origin.

In addition, the colours had a functional purpose of safety and signalling.

Comment

Some key takeaways from this decision:

1. Limiting the list of goods and services after the BoA’s decision will not change the prospects of success of an appeal to the General Court. It only limits the scope of the General Court’s review, provided that the limitation does not require an assessment, which the BoA had not conducted.

This is also true for opposition proceedings. Limiting an opposed application after the BoA upheld the opposition will not be helpful before the General Court.

2. Non-traditional trade marks, which show the appearance of the goods, such as position marks, should only be filed for the goods to which they are applied. Filing them for other goods or a broader category may cause the EUIPO to reject them for not being properly represented (Artt. 4 and 7(1)(a) EUTMR).

3. Showing that there is a practise of use of specific colours by competitors in the sector concerned will not be sufficient to establish the inherent distinctiveness of a colour trade mark, unless it is proven that the colour trade mark in question will be perceived as an indication of the commercial origin. How this can be done without already establishing acquired distinctiveness is not quite clear.