Assessment of distinctiveness necessarily involves analysis of nature and categorisation of mark

In Gamesa Eólica SL v Office for Harmonisation in the Internal Market (OHIM) (Case T-245/12, November 12 2013), the General Court has held that the Board of Appeal of OHIM had jurisdiction to re-examine the nature and exact categorisation of a contested mark, but that it had made an error of assessment in re-categorising such mark. 

Enercon GmbH is the registered proprietor of Community trademark (CTM) No 2346542 for the sign shown below in respect of goods in Class 7 of the Nice Classification ("wind energy converters, and parts therefor").

In the original application, the CTM was identified as a colour mark and its colours were described by reference to the relevant RAL codes (a colour matching system used in Europe).

The CTM was registered in 2003 and, in 2009, Gamesa Eólica SL applied for a declaration of invalidity on the basis that the CTM had been registered contrary to the provisions of Article 7 of the Community Trademark Regulation (207/2009) and that Enercon had acted in bad faith at the time of the application.

The Cancellation Division of OHIM declared that the CTM was invalid on the basis that the mark was devoid of distinctive character (Article 7(1)(b) of the regulation), in particular because "the mark defined the way in which the registered colours may cover a wind turbine tower".

Enercon appealed the decision and the Board of Appeal annulled the decision of the Cancellation Division. As part of its reasoning, the Board of Appeal re-categorised the CTM (ie, it held that it was a figurative mark consisting of colours and not a colour mark per se), and found that the CTM had sufficient distinctive character and that it was not descriptive. 

Gamesa appealed the decision to the court, arguing that:

1. the Board of Appeal was not entitled to re-categorise the CTM on its own initiative; 
2. in any event, the re-categorisation was wrong and, consequently, so was the board’s assessment of the distinctive character of the CTM; and
3. the board should have found that Enercon had acted in bad faith when it filed its application for the CTM.

With regard to the first plea, Gamesa’s argument was that the Board of Appeal, in re-categorising the CTM, had infringed the so-called 'principle of functional continuity' pursuant to Article 64(1) of the regulation, in that it had not based its decision on the matters of fact and law put forward by the parties in the proceeding before the Cancellation Division. In particular, Gamesa noted that Enercon had filed its application for a colour mark per se and, in the course of the proceedings before the Board of Appeal, the parties had not challenged the nature of the CTM as a colour mark.

The court held that, in assessing the distinctive character of a sign, one will necessarily consider its nature and categorisation. In fact, the Cancellation Division had carried out this assessment in respect of the CTM and, therefore, the Board of Appeal had jurisdiction to examine the nature and categorisation of the CTM and, if appropriate, reach a different conclusion from that of the Cancellation Division.

Further, the court held that the Board of Appeal was entitled to conduct this examination irrespective of the continuity of functions between the various departments of OHIM.

Having considered the key principles in relation to the registrability of colour marks, the court observed that the nature of the CTM may have a significant influence in the assessment of its distinctive character and considered whether the Board of Appeal was correct in re-categorising it as a two-dimensional figurative mark.

The court considered the circumstances relating to Enercon’s original application for the CTM (including the fact that Enercon applied for a colour mark and that OHIM acknowledged receipt of the application without raising objections in this regard), the arguments put forward by the parties during the proceedings at OHIM, and whether the application for the CTM could have been structured differently or with more clarity.

The court concluded that the Board of Appeal’s perception of the nature and characteristics of the CTM was wrong and that it had made an error of assessment by re-categorising the CTM as a figurative mark. Therefore, the court upheld Gamesa’s appeal in its entirety.

Whilst the ultimate decision does not break any new grounds, the court appears to state that the assessment of the distinctive character of a sign will inevitably involve a consideration of its nature and categorisation.

Further, the court sets out useful guidelines on the registrability of colour marks - in particular, the fact that the distinctiveness of colour marks per se without any prior use is "inconceivable save in exceptional circumstances, and particularly where the number of goods and services for which the mark is claimed is very restricted and the relevant market very specific". This reflects the need to have regard to the general interest not to unduly restrict the availability of colours for other traders in the market, as recognised and discussed by the Court of Justice of the European Union in Libertel (Case C-104/01, Paragraph 60), Heidelberger Bauchemie GmbH (Case-49/02, Paragraph 41) and subsequent cases.

Cam Gatta, Redd Solicitors LLP, London