Deere's yellow and green colour mark is valid, says CFI

European Union
In BCS SpA v Office for Harmonization in the Internal Market (OHIM) (Case T-137/08, October 28 2009), the Court of First Instance (CFI) has upheld a decision of the Second Board of Appeal of OHIM in which the latter had refused to invalidate Deere & Company's colour mark.  

In 1996 Deere sought to register a trademark consisting of a combination of the colours yellow and green for goods in Class 7 ("attached, pushed or self-propelled agricultural and forestry machines") and Class 12 of the Nice Classification ("self-propelled agricultural and forestry machines, in particular farm tractors, small tractors, land tractors and trailers"). The colours were designated using the Munsell system as "9.47 GY3.57/7.45 (green) and 5.06 Y7.63/10.66 (yellow)". The arrangement was described as being "green for the vehicle body and yellow for the wheels", as shown by the picture of a tractor attached to the application.

In 2004 BCS SpA sought a declaration of invalidity in respect of all the goods covered by Deere's mark. BCS claimed that:
  • the mark was devoid of any distinctive character at the time the application for registration was filed;
  • there was insufficient proof of distinctiveness acquired through use in all member states of the European Union; and
  • Deere's mark had been registered despite the fact that BCS owned an Italian unregistered trademark which also consisted of a combination of the colours green and yellow.
In 2006 the Cancellation Division of OHIM rejected the application for a declaration of invalidity. BCS appealed, claiming that: 

  • the issue of distinctiveness acquired through use had not been assessed in all relevant territories; and
  • OHIM had wrongly concluded that BCS's sign was not perceived by the public as an indication of origin.
In 2008 the Second Board of Appeal of OHIM affirmed the decision of the Cancellation Division. BCS appealed to the CFI.

The CFI ruled that although distinctiveness acquired through use must be demonstrated in all EU member states, this did not mean that the same type of evidence had to be provided in respect of each member state. The data provided by Deere relating to market share, revenue and advertising expenditure, combined with the fact that its mark had been consistently used over a long period of time, was sufficient to prove that the mark had acquired distinctiveness.

The CFI then turned to the argument that Deere's mark had been registered despite the existence of an unregistered mark consisting of the colours green and yellow. The CFI found that although BCS could have acquired rights in the unregistered mark through its use from 1983 to 1996, "it did not use the combination of the colours green and yellow in a consistent and uniform manner". Moreover, the CFI concluded that the evidence submitted by BCS before the Board of Appeal was, on the whole, of less evidentual value than that submitted by Deere.

The action was thus dismissed.
Maria Pereira, Allen & Overy LLP, Amsterdam

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