Libertel principles cultivated in seeds colour mark case

In KWS Saat AG v Office for Harmonization in the Internal Market (OHIM), the European Court of Justice (ECJ) has applied the approach to colour mark registrations taken in the Libertel decision to an application to register the colour orange as a Community trademark. (For background discussions on the Libertel Case see Single-colour registration not possible, says advocate general and The future of colour registration is orange).

KWS Saat AG applied to the OHIM in 1998 to register the colour orange as a Community trademark for goods in Classes 7, 11 and 31 of the Nice Classification relating to seed treatment installations, and agricultural, horticultural and forestry products, as well as Class 42 for technical and business consultancy services relating to plant cultivation, particularly in relation to the seed industry.

Both the examiner at the OHIM and the Second Board of Appeal dismissed the application in its entirety on the grounds that the mark was devoid of any distinctive character under Article 7(1)(b) of the Community Trademark Regulation. On appeal, the Court of First Instance (CFI) agreed with the board in relation to the goods in Classes 7, 11 and 31. However, as regards to the services in Class 42, the CFI held that the colour orange was capable of distinguishing the services of KWS.

Before the ECJ, KWS appealed the decision of the CFI in respect of the goods in Classes 7, 11 and 31 on four grounds:

• breach of Article 74(1) of the Community Trademark Regulation, which provides that the OHIM should examine the facts of a case of its own motion;
  
  
• infringement of the right to a fair hearing;
  
  
• breach of the obligation to state reasons; and
  
  
• misconstruction of Article 7(1)(b) of the regulation with regard to the requirement of distinctive character.

The ECJ held that the first and third grounds of appeal were inadmissible.

The second ground of appeal also ultimately failed. Article 73 of the regulation states that decisions shall "be based only on reasons or evidence on which the parties concerned have had an opportunity to present their comments". The board had carried out its own research on the Internet regarding the use of colours in the seed industry and had referred to this evidence to justify part of its decision. This evidence had not been first communicated by the board to the parties. The CFI had held that this was not a breach of Article 73 but the ECJ overruled the board and the CFI on this point. The result did not change, however, as the board had already formed the view that the colour orange did not have a distinctive character for the goods in question, irrespective of the additional evidence.

In relation to the fourth ground of appeal, the ECJ upheld the CFI's ruling. Article 7(1)(b) does not draw any distinction between different types of signs. The CFI had correctly pointed out that the public's perception is not necessarily the same in respect of a mark comprised of a colour as compared with a word or figurative mark. The ECJ confirmed the principles in Libertel that a colour per se may acquire a distinctive character for the specified goods and services as a consequence of the use made of it. Without such use, it is almost inconceivable that a mark consisting solely of a colour will be registrable.

Mark A Lubbock, Ashurst, London