Has green-and-orange combination acquired distinctiveness for agricultural machines? No, says the EUIPO

Earlier this month, the Fifth Board of Appeal (BoA) of the EUIPO, refused the registration of a colour combination for “agricultural machines and implements, namely field sprayers” in Class 7 of the Nice Classification due to the absence of sufficient evidence demonstrating acquired distinctiveness through use under Article 7(3) EU Trade Mark Regulation (EUTMR).

Background

Amazonen-Werke H. Dreyer SE & Co. KG (applicant) had initially filed an application for its green and orange colour combination. However, neither the EUIPO Examiner, nor the BoA, nor the EU General Court allowed the registration of the sign below as an EU trade mark due to lack of inherent distinctiveness under Article 7(1)(b) EUTMR.

Subsequently, the applicant made a subsidiary claim under Article 7(3) EUTMR, and this time argued that the colours green (Pantone 7742 C) and orange (Pantone 1505 C) had acquired distinctiveness through extensive use in the EU, in relation to the agricultural machines it produces. The Examiner, again, refused registration, on the basis of insufficient evidence.

The applicant appealed this finding to the BoA.

BoA decision

Pursuant to Article 7(3), it is possible for an inherently non-distinctive sign to acquire distinctiveness through use as a trade mark, allowing the consumers to treat the sign as an indicator of origin.

Type of evidence

The BoA acknowledged that, to prove that a sign has gained distinctive character, various types of materials can be taken into consideration, including “the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public which, because of the mark, identifies the services as originating from a particular undertaking; and statements from the chambers of commerce and industry or other trade and professional associations”. Nevertheless, the Board highlighted that some of these materials could only serve as secondary evidence that can support the primary evidence, namely surveys, market studies, and statements from professional bodies or specialised public.

Accordingly, among the numerous evidence submitted by the applicant, only the market survey held in France and statements from industry reflecting the views and perceptions of the German public were treated as primary, direct evidence by the BoA.

Manner of use

In compliance with the Court of Justice of the EU (CJEU)’s case law, the BoA highlighted that use should allow a non-distinctive sign to gain distinctiveness independently, and therefore, even when seen on its own, should be capable of identifying the origin of the relevant goods.

Since the green and orange colour combination has been used together with the word mark “AMAZONE” and the figurative mark below, the applicant needed to provide evidence demonstrating that the green-orange combination had acquired distinctiveness on its own, allowing the relevant public to associate that sign with the applicant’s products, even when encountered alone.

The applicant's figurative mark

A common use of the green-orange combination in conjunction with
the other marks of the applicant

Although some of the primary evidence submitted demonstrated that the relevant public in France and Germany, upon seeing the green-orange combination, could recall the applicant’s field sprayers, the BoA found that it was not clear whether the average consumer in the EU is sufficiently familiar with the said colour combination and would associate it with the applicant’s goods. Consequently, the Board moved on to the final, and arguably the most significant criterion in proving acquired distinctiveness within the meaning of Article 7(3) EUTMR, namely the requirement of acquired distinctiveness through use in the EU.

Scope of evidence

According to CJEU case law, although the evidence submitted does not need to cover each individual Member State, it still needs to be able to demonstrate that the sign concerned has acquired distinctiveness throughout the EU territory. The necessary evidence, as explained by the BoA, can be produced either “globally for all the Member States or separately for different Member States or groups of Member States” [see para 28 of the decision].

When applied to the case at hand, the BoA was not convinced that the relevant colour combination had acquired distinctiveness throughout the EU. This was mainly due to the very narrow scope of the primary evidence. The Board held that, although the market survey submitted by the applicant demonstrated a recognition rate of 63% for the said green-orange combination for agricultural machines, it only took into account the consumers in France. Likewise, the statements from industry merely represented the views of the relevant public in Germany. Although France and Germany might be among the largest Members of the Union and therefore constitute a substantial part of the EU, merely recognition in two Member States did not equate to recognition throughout the EU.

The applicant did provide additional materials demonstrating its commercial activities in 14 members of the EU, such as invoices and advertising campaigns. However, given the subsidiary nature of these materials, the BoA concluded that the applicant’s colour combination had not acquired distinctiveness within the meaning of Article 7(3) throughout the EU, by noting that merely selling products in those countries did not prove “brand awareness” for the sign concerned [para 36].

Comment

A Kat wondering if she is infringing
anyone's trade mark....  

It is no news that applicants face significant challenges in successfully registering their colour or colour combination marks, at least in the EU. It is also no news that invoking Article 7(3) EUTMR successfully is highly difficult. One might, therefore, consider that the acquired distinctiveness mechanism could prevent numerous businesses from registering their signs that has acquired some level of distinctiveness via extensive use in the EU, because of the high costs of conducting wide market surveys that is capable of reflecting the perceptions of consumers in the whole Union.

However, it should be noted that Article 7(3) only applies to inherently non-distinctive signs, in other words signs that are ordinary or descriptive and should therefore remain common to all, rather than belonging to a single undertaking. Given the limited number of colours and the many ways a single colour or a combination of colours can be used as an ornamental or attractive element of brands, it is wise to act cautiously or even adopt a restrictive approach when it comes to providing them with trade mark protection.

Image credit: Imagen 3