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European IP Bulletin, Issue 17, November - Trade Mark
Trade Mark
9. KWS Saat v OHIM
On 21 October 2004, the European Court of Justice (ECJ) gave its judgment in KWS Saat v OHIM, case C-447/02 P. The case concerned the registration of a single colour as a trade mark. Under Art 7(1)(b) of Council Regulation (EC) No 40/94 on the Community Trade Mark, signs which are devoid of any distinctive character are unregistrable.
The claimant had sought to register the colour orange as a Community trade mark against a variety of goods and services relating to agricultural, horticultural and forestry. Both OHIM and the Board of Appeal refused the application on the basis that it was devoid of distinctive character. The claimant was partially successful at its appeal before the Court of First Instance (CFI) which allowed the mark to proceed in relation to consultancy services; however, it maintained the objection in relation to any seed-related installations or products. The Board justified its decision by explaining that the shade of orange claimed, or very similar shades, for those goods was not rare.
The claimant appealed to the ECJ on the grounds that the CFI had incorrectly applied more stringent criteria in assessing its mark, which was inconsistent with the manner in which other marks were to be assessed.
The ECJ upheld the CFI’s findings in relation to the treatment of seeds and installations, saying that orange was frequently used by breeders to indicate that the seeds had been treated and that therefore the colour was not sufficiently distinctive.
The ECJ also held that, with certain trade marks, the public’s perception will not be the same, and that the relevant public may identify word or figurative marks as a badge of origin relating to certain goods and services but will find it more difficult to recognise signs which rely on a part of the product’s appearance. Since the colour orange was frequently used for agricultural machinery, the CFI had rightly concluded that it did not allow customers to distinguish the company’s goods from those of others. It followed that the CFI did not apply a more stringent criterion for colour marks than for others and had therefore applied the law correctly.
OHIM had not cross-appealed, but it had invited the ECJ to provide further clarification on the protection of colour marks lacking contour in respect of the consultancy services. The ECJ declined to do so, with the consequence that the CFI’s annulment of OHIM’s decision in relation to business consultancy remained. The claimant will therefore be able to ask OHIM to register the mark, and further clarification on colours lacking contour will be left for another occasion.
10. EJC in OHIM v Erpo Möbelwerk
On 21 October 2004, the Court of Justice gave its judgment in OHIM v Erpo Möbelwerk (DAS PRINZIP DER BEQUEMLICHKEIT) case C-64/02 P.
OHIM sought to annul the judgment of the Court of First Instance (CFI), which declined to endorse OHIM’s view that an advertising slogan was not registrable due to the lack of an additional element of imagination or originality.
The CFI found that OHIM erred in law in deducing that the slogan lacked distinctive character. According to the case law of the CFI, lack of distinctiveness was not the same thing as lack of originality and it was not appropriate to apply more stringent criteria than for other types of sign. The reasoning of OHIM could only be justified if the combination of words with the description of designating characteristic of goods was commonly used in business, especially advertising.
OHIM filed an appeal on the grounds that:
- Slogans must have additional elements confirming their distinctive character, otherwise they are purely advertising and cannot enable the origin of the goods to be identified.
- If the sign concerned is not capable of distinguishing the goods or services in question, its registration as a trade mark must be refused on the basis of Article 7(1)(b) of EC Regulation No. 40/94, the Community Trade Mark Regulation, without it being necessary to produce proof that it is already commonly used by the relevant public.
The ECJ held that trade marks must be distinctive to serve their purpose and have to be assessed in relation to both the goods or services for which they are registered, and the perception of them by the general public. Each of the grounds for refusal listed in Article 7(1) are independent of the others and should be examined separately. It disagreed with OHIM on its rejection of registration because of the absence of an additional element of imagination or an additional element of originality.
This case may have several implications as to the registration of slogans in the future. They may no longer be rejected solely on the basis of the article 7(1)(b) requirement. In other words, distinctive character will not be the sole ground for judging registration of trade marks. Rather, as long as the relevant public can identify the origin of the good or service and distinguish them from other undertakings, the marks may be registrable.
This case potentially widens the scope for registration of trade marks and, in particular, trade marks consisting of signs or indications that are also used as advertising slogans.
11. ECJ Sheds Light on Shape Trade Marks
The European Court of Justice gave it decision in Mag Instrument Inc v OHIM, Case C-136/02 P, on 7 October 2004.
It is now well established that the shapes of goods and their packaging can be registered as trade marks in the EU. In fact, shapes are expressly mentioned in article 4 of Regulation 40/94 as types of signs which may act as trade marks. The registrability of shapes has been confirmed by the ECJ in its Linde decision (Case C-53/01). However, doubts have been expressed over whether the shape of goods will be perceived as trade marks in practice or if in fact consumers will merely view shapes as a feature of the goods, making them devoid of distinctive character and hence unregistrable under Art.7(1)(b) of Regulation 40/94.
Mag Instrument Inc (Mag) took centre-stage in this debate when it attempted to register the shapes of five of its MAG LITE torches as Community trade marks. The application was rejected by both the Examiner and the OHIM Board of Appeal on grounds of lack of distinctiveness and an appeal to the CFI was unsuccessful. Finally Mag appealed to the ECJ.
The ECJ affirmed the decision of the CFI. Mag had argued that that the mere fact that a shape was a “variant” of a common shape of a type of product was sufficient for it to be distinctive under Art.7(1)(b). However, this was held not to be the correct test for examining the distinctiveness of shape marks. Although the criteria for assessing the distinctiveness of shape marks are the same as those that apply to other categories of trade marks, consumers are not used to making assumptions about the origin of a product on the basis of its shape, and so, as a matter of consumer perception, shapes may be less likely to be seen as trade marks than word or figurative marks. Thus, the more closely the shape applied for resembles the shape most likely to be taken by the product in question, the greater the likelihood that the shape will be devoid of distinctive character. Only marks which depart significantly from the norm or customs of the sector, and which therefore fulfil the essential function of indicating origin, will not be devoid of distinctive character.
Mag’s marks had not met this test. Mag had argued that the unique design of its torches conferred distinctiveness on them, and that the CFI had failed to consider its arguments based on the aesthetic qualities of its torches. However, the ECJ found that this was not the case. The CFI had considered the excellence of the design and aesthetic and functional qualities of the torches but had found that they were not sufficient to confer distinctiveness on the shapes ab initio, though those factors might contribute to acquired distinctive character. Likewise, the widespread recognition of Mag’s design as a result of its high quality showed acquired, rather than inherent, distinctiveness.
The ECJ held that in assessing the distinctiveness of a shape, it is permissible to consider its component parts, as the CFI did, as long as this is part of an assessment of the overall impression given by the shape. The distinctive character of a mark is judged by reference to the presumed expectations of the average consumer of the goods or services in question. Nevertheless, evidence of the actual perception of the mark by consumers may be relevant under Art.7(1)(b). However, evidence of consumer perception gathered after a mark has been on the market for many years will not be relevant since it properly belongs in the assessment of acquired distinctiveness under Art.7(3). Furthermore, the CFI was not obliged to adopt the position of Mag’s expert witness, and in refusing to hear him, the CFI had not infringed Mag’s right to be heard.
The basic propositions of law in this case will be familiar from the ECJ’s Linde and Henkel (Case C-456/01 P) decisions. However, this case does add detail. Notably, it quantifies exactly how different a shape must be from the common shape of the goods in order to be considered distinctive. Further, it shows that good design is not necessarily distinctive design for trade mark law purposes.
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