General Court: gradient of green shades lacks distinctiveness

In Enercon GmbH v Office for Harmonisation in the internal Market (OHIM) (Case T-655/13, January 28 2015), the General Court has upheld a decision of the First Board of Appeal of OHIM in which the latter had confirmed the OHIM examiner’s refusal to register as a Community trademark (CTM) a sign consisting of a gradient of shades of the colour green, represented below, in relation with “wind turbines” in Class 7, “scale models and scale model kits of wind turbines as instructional materials” in Class 16 and “scale models and scale model kits of wind turbines as toys” in Class 28 of the Nice Classification.

When filing this trademark before OHIM, the applicant described it as being a colour mark. Subsequently, in the course of the registration process, it requested that OHIM requalify the trademark as a figurative mark.

The examiner refused to register the mark, finding that it was not sufficiently distinctive in relation with the covered goods, and rejected the applicant’s request for amendment of its trademark on the grounds that such correction did not comply with Article 43(2) of the Community Trademark Regulation (207/2009).

The examiner’s decision was upheld by the First Board of Appeal of OHIM in a decision of September 11 2013. The applicant appealed.

In its decision, the General Court first indicated that, according to Article 43(2) of the regulation, a CTM application may be amended, upon request by the applicant, only by correcting the name and address of the applicant, errors of wording or obvious mistakes, provided that such correction does not substantially affect the trademark or extend the list of goods or services.

On this point, the court upheld OHIM’s decision, and pointed out that the modification of the qualification of a mark substantially alters the mark as filed and violates Article 43(2).

Regarding the assessment of the distinctive character of the mark, the court first recalled the criteria established by settled case law (see Libertel (Case C-104/01) and Heidelberger (Case C-49/02)) to determine whether a colour mark is sufficiently distinctive - namely, the requirements of graphical representation and capacity to distinguish. A colour mark per se must be represented graphically in a way that is clear, precise, self-contained, equally accessible, intelligible, durable and objective. This 'objective' condition may be satisfied through use of an internationally recognised identification code (eg, the Pantone Classification System). A representation of the colour on its own, or a description in words, is unlikely to be sufficient (because representations may fade and words may be unclear).

In addition, the colour must have the potential of distinguishing the goods or services of one trader from those of another. The court also recalled that regard must be had to the general interest in not unduly restricting the availability of colours for all traders, and that another relevant factor to consider in assessing the registrability of colour marks is the breadth of the specification of goods and services.

In this specific case, the court considered that the mark applied for did not fulfil the abovementioned criteria, especially as the mark was aimed at professionals whose level of attention was higher, given the goods for which registration was sought.

Not surprisingly, the court underlined the fact that the colour green, in relation with “wind turbines”, lacked distinctive character, given that:

• This colour would be seen as a purely decorative element fulfilling an exclusively aesthetic purpose, which was to integrate the wind turbines into nature; it was hence not capable of identifying the products for which registration was sought as originating from a particular undertaking and distinguishing these products from those of other undertakings; and

• This colour would be perceived as referring to the ecological character of the wind turbines, which produce green energy.

The court also emphasised that the colour gradient was regular, logical and commonplace; hence, it was not sufficiently distinctive to indicate the origin of the goods.

This decision confirms that very strict conditions apply to the registration of colour marks. It is interesting to note that trying to overcome such a refusal by requesting the requalification of the mark as a figurative mark will be in vain.

Meriem Loudiyi, INLEX IP Expertise, Paris