Paint filter with colour yellow is not distinctive, says CFI

In Louis M Gerson Co Inc v Office for Harmonization in the Internal Market (OHIM) (Case T-201/06, September 10 2008), the Court of First Instance (CFI) has upheld a decision refusing to register a three-dimensional sign consisting of a paint filter coloured yellow near the tip.
Article 4 of the Community Trademark Regulation (40/94) lists the different signs that may be registered as trademarks. Specifically, Article 4 states that the shape of goods may constitute a trademark provided that it is capable of distinguishing the origin of the goods. However, shapes that are commonly used in the trade are not registrable.
Although the requirements for registrability are generally the same for all types of trademarks, these requirements do not seem to apply to colours – probably because colours are not expressly cited in Article 4 of the regulation. However, OHIM has registered colour marks where the applicant successfully demonstrated that the mark had acquired distinctiveness through use (see Case R 7/97-3, orange (without specification) (February 12 1998); Case R 530/2005-2, orange Pantone 131C (December 7 2005); Case R 1620/2006-2, purple (May 4 2007)). Similarly, OHIM has recently accepted an application for the registration of a specific shade of the colour red (RAL 3020) based on acquired distinctiveness (Application 3425311).
Although the ECJ believes that colours may be registered as trademarks, this is true only in exceptional cases. In Libertel Groep BV v Benelux-Merkenbureau (Case C-104/01), the ECJ held that:
“Consumers are not in the habit of making assumptions about the origin of goods based on their colour or the colour of their packaging, in the absence of any graphic or word element, because, as a rule, a colour per se is not, in current commercial practice, used as a means of identification. A colour per se is not normally inherently capable of distinguishing the goods of a particular undertaking.”
Even applications for the registration of a colour in a specific form (eg, the blue dot of Blaupunkt GmbH (Registration 551473)) have been accepted only on the basis of acquired distinctiveness.
However, the question remained as to whether trademarks consisting of the usual shape of the product combined with a colour in a specific form are registrable. Even though the shape and the colour are not distinctive per se, one can argue that the combination of both elements may constitute a distinctive trademark.
In the present case, Louis M Gerson Co Inc sought to register a three-dimensional sign consisting of a paint filter with a yellow patch near the tip. Although admitting that the application of colour near the tip of the filter was unusual, the examiner rejected the application on the grounds that the mark applied for was not distinctive. The Board of Appeal affirmed the decision of the examiner. Gerson appealed to the CFI.
First, the CFI held that the shape of the filter was usual for competing goods on the market. It also found that the mark consisted of “a simple shape, which is amongst those which come naturally to the mind of the consumer in relation to paint filters”.
Gerson argued that no other manufacturer used colour on its filters. Therefore, the average consumer would notice the colour as being unusual for such products. In particular, Gerson submitted that use of the colour would not be merely decorative and would be capable of indicating the origin of the goods. Moreover, Gerson submitted that, in view of the small number of competitors, the registration of the trademark applied for would not unduly restrict the availability of colours.
However, the CFI took the view that the average consumer would perceive the use of the colour as indicating the tip of the filter or as a decorative element, but not as a distinctive element. The CFI failed to explain why consumers would need a colour to designate the tip of the filter. Equally, the CFI did not examine whether the usual shape of the filter combined with the colour element may create the required minimum of distinctiveness.
Although Gerson was the only filter manufacturer to use colour on its goods, the CFI held that registration of the trademark would unduly restrict the availability of colours for competitors. In this respect, the CFI referred to the Libertel decision, in which it was held that:
“in assessing the potential distinctiveness of a given colour as a trademark, regard must be had to the general interest in not unduly restricting the availability of colours for the other traders who offer for sale goods or services of the same type as those in respect of which registration is sought.”
Gerson’s action was thus dismissed. Arguably, it is regrettable that the CFI did not examine the overall impression of the shape of the goods together with the colour yellow, and failed to address the fact that the colour was represented in a certain form.
Hans Georg Zeiner, Zeiner & Zeiner, Vienna

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