JUDGMENT OF THE GENERAL COURT (Eighth Chamber)

3 May 2017 ([\*](#Footnote*))

(EU trade mark — Invalidity proceedings — EU trade mark consisting of blended shades of green — Absolute ground for refusal — No distinctive character — Article 7(1)(b) of Regulation (EC) No 207/2009 — Article 52(1)(a) of Regulation No 207/2009)

In Case T‐36/16,

**Enercon GmbH,** established in Aurich (Germany), represented by S. Overhage, R. Böhm and A. Silverleaf, lawyers,

applicant,

v

**European Union Intellectual Property Office (EUIPO),** represented by A. Folliard-Monguiral, acting as Agent,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being

**Gamesa Eólica, SL,** established in Sarriguren (Spain), represented by A. Sanz Cerralbo, lawyer,

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 28 October 2015 (Case R 597/2015-2), concerning invalidity proceedings between Gamesa Eólica and Enercon,

THE GENERAL COURT (Eighth Chamber),

composed of A.M. Collins, President, R. Barents (Rapporteur) and J. Passer, Judges,

Registrar: M. Marescaux, Administrator,

having regard to the application lodged at the Court Registry on 26 January 2016,

having regard to the response of EUIPO lodged at the Court Registry on 20 April 2016,

having regard to the response of the intervener lodged at the Court Registry on 4 April 2016,

further to the hearing on 12 January 2017,

gives the following

**Judgment**

**Background to the dispute**

1        On 21 August 2001, the applicant, Enercon GmbH, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1)).

2        Registration as a mark was sought for the following sign:

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3        The goods in respect of which registration was sought are in Class 7 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, as revised and amended, and correspond to the following description: ‘Wind energy converters, and parts therefor’.

4        The contested mark, reproduced in paragraph 2 above, is identified in the application form as a ‘colour mark’. A description of the colours applied for was provided by means of a colour code.

5        The EU trade mark application was published in *Community Trade Marks Bulletin* No 54/2002 of 8 July 2002 and was registered on 30 January 2003.

6        On 26 March 2009 the other party to the proceedings, Gamesa Eólica SL, filed an application for a declaration of invalidity against the EU trade mark on the basis of Article 51(1)(a) and (b) of Regulation No 40/94 (now Article 52(1)(a) and (b) of Regulation No 207/2009).

7        By decision of 8 December 2010, the Cancellation Division granted the application for a declaration of invalidity on the basis of Article 7(1)(b) of Regulation No 207/2009. With regard, in particular, to the nature of the contested mark, the Cancellation Division considered, in essence, that the mark defined the way in which the registered colours could be applied to a wind turbine tower.

8        On 28 January 2011, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the Cancellation Division’s decision.

9        By decision of 1 March 2012 (‘the first decision’), the First Board of Appeal of EUIPO annulled the decision of the Cancellation Division. First, it held that the contested mark comprised a figurative sign consisting of a two-dimensional shape made up of colours, and not a colour mark. Second, it considered that the contested mark had sufficient distinctive character, since it represented neither a wind turbine tower nor a colour mark. Third, the Board considered that the contested mark was not descriptive and that Article 7(1)(e)(ii) of Regulation No 207/2009 was not applicable in the case, because the contested mark was neither a colour mark nor a three-dimensional wind turbine. Fourth, it held that there was no evidence that the contested mark, as re-categorised, had been applied for in bad faith, inasmuch as that mark could not prevent competitors from complying with national administrative rules. In that regard, the Cancellation Division had based its arguments, inter alia, on the fact that the colour green, or a blend of several shades of green, could not be registered in respect of wind turbine towers, since an EU mark should not hinder the application of national legislation intended to limit the visual impact of wind turbines or, on the other hand, with regard to their upper part, to ensure that the wind turbines should be visible to aircraft.

**Procedure before the General Court and the Court of Justice**

10      By application lodged at the Registry of the General Court on 4 June 2012, Gamesa Eólica brought an action for annulment of the first decision. Enercon did not participate in the proceedings before the General Court within the meaning of Article 134(1) of the 1991 Rules of Procedure; it was therefore not an intervener in the proceedings before the General Court.

11      Gamesa Eólica put forward three pleas in law in support of its action. The first plea in law alleged infringement of Article 7(1)(b) of Regulation No 207/2009, on the grounds that the First Board of Appeal of EUIPO had wrongly re-categorised the contested mark as a figurative mark when it had been registered as a colour mark and had considered that the contested mark had distinctive character. The second plea in law alleged infringement of Article 62 of Regulation No 207/2009 and of the principle of functional continuity. The third plea in law alleged infringement of Article 52(1)(b) of Regulation No 207/2009, in that the Board of Appeal had failed to take account of the bad faith demonstrated by Enercon in filing its application for registration of the contested mark.

12      After rejecting the second plea in law put forward by Gamesa Eólica, the General Court, in its judgment of 12 November 2013, *Gamesa Eólica* v *EUIPO — Enercon**(Blended shades of green)* (T‐245/12, not published, EU:T:2013:588, ‘the first judgment of the General Court’), annulled the first decision, upholding the first plea in law, on the ground that the First Board of Appeal had based its decision on a mistaken perception of the nature and characteristics of the contested mark and had made an error of assessment in finding that the contested mark was not a colour mark, but rather a two-dimensional figurative mark made up of colours. Having found that an error of assessment had been made concerning the nature of the contested mark at issue, the General Court did not go on to examine whether the mark had any distinctive character.

13      The applicant appealed against that judgment by document lodged at the Registry of the Court of Justice on 22 January 2014.

14      Since the applicant had not lodged any submissions before the General Court, the Court of Justice held that it had not participated in the proceedings at first instance. Therefore, since it had not been an intervener before the General Court, the applicant could not bring an appeal against the first judgment of the General Court under the second paragraph of Article 56 of the Statute of the Court of Justice (order of 12 February 2015, *Enercon* v *Gamesa Eólica*, C‐35/14 P, EU:C:2015:158, paragraph 25).

15      The Court accordingly dismissed the appeal as manifestly inadmissible.

**Procedure before the Second Board of Appeal**

16      The case was remitted to the Second Board of Appeal (Case R 597/2015-2), which gave its decision on 28 October 2015 (‘the contested decision’). The Board of Appeal held, in point 16 of the contested decision, that the subject of the proceedings was the mark as registered and it was therefore a colour mark that was in issue. The Board of Appeal, on the basis of the first judgment of the General Court, held in point 19 of the contested decision that the contested mark could not be qualified as a figurative mark and concluded, in points 20 and 21 of the same decision, that that colour mark consisted of different shades of green and of white, and was limited to the specific form and arrangement of a slender, upright trapezoidal surface including at the base five horizontally adjoining stripes of green gradually becoming lighter from the bottom to the top, and the rest of whose surface was white.

17      With regard to the distinctive character of the contested mark, the Board of Appeal, after setting out the case-law, held, in point 32 of the contested decision, that the contested mark conveyed exclusively an aesthetic message as a decorative element of the goods in question but was not, however, recognised as a reference to their origin. The Board of Appeal found in point 33 of the contested decision that green, as a colour of nature, referred to the fact that wind energy converters were ecological or environmentally friendly. In addition, the Board of Appeal noted, in point 34 of the decision, that the arrangement amounted to a uniform and logical, and thus entirely mundane, blending from dark to light green then to white, and that it had to be taken into consideration that consumers keep only an incomplete picture of the colours in their minds. Furthermore, the Board of Appeal considered, in point 36 of the contested decision, that the contested mark contained no elements that could attract the consumer’s attention and that there was nothing to indicate that it could be seen as singular or memorable. Finally, in paragraph 37 of the contested decision, the Board of Appeal stated that given that wind energy converters are high-value capital goods, consumers do not identify or purchase these goods by reference to their decoration or external presentation, but by reference to trade names and word marks, which provide them with precise, comprehensible information regarding the origin of the goods. The Board of Appeal therefore concluded, in point 38 of the contested decision, that the contested mark lacked distinctive character.

18      As regards the question whether the contested mark had acquired distinctiveness as a consequence of the use which had been made of it, the Board of Appeal, in point 40 of the contested decision, remitted the case to the Cancellation Division for an assessment of all the evidence of use submitted by the applicant.

**Forms of order sought**

19      The applicant claims that the Court should:

–        annul the contested decision;

–        order EUIPO to pay the costs.

20      EUIPO and the intervener contend that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

**The admissibility of new evidence submitted by the applicant**

21      At the hearing, the applicant sought to add new evidence to the file with a view to demonstrating that the classification of marks by type of mark could not, in law, affect the analysis of the distinctive character of a mark or whether a mark can be registered. Moreover, it claimed that, in the present case, the registration code used by EUIPO did not correspond to the code used for ‘colour marks’.

22      In that regard, it should be borne in mind that the purpose of an action before the Court is to review the legality of decisions of the Boards of Appeal of EUIPO within the meaning of Article 65 of Regulation No 207/2009. It is therefore not the Court’s function to re-evaluate the factual circumstances in the light of evidence which has been adduced for the first time before it (see order of 13 September 2011, *Wilfer* v *OHIM*, C‐546/10 P, not published, EU:C:2011:574, paragraph 41 and the case-law cited, and judgment of 7 November 2014, *Kaatsu Japan* v *OHIM**(KAATSU)*, T‐567/12, not published, EU:T:2014:937, paragraph 19 and the case-law cited).

23      Moreover, it should be noted that the applicant has not put forward any reason which it maintains prevented it from submitting new evidence, or from presenting the arguments based on that evidence, in the administrative proceedings. Nor has the applicant claimed that it was possible to submit the new evidence and the arguments to support it only at the stage of the action before the Court, or, indeed, only at the hearing.

24      It follows that the new evidence mentioned at paragraph 21 above, which is not included in the administrative file, must be declared inadmissible.

**Substance**

25      In support of its action, the applicant raises a single plea in law, alleging infringement of Article 7(1)(b) of Regulation No 207/2009.

26      According to Article 7(1)(b) of Regulation No 207/2009, trade marks which are devoid of any distinctive character are not to be registered.

27      For a trade mark to possess distinctive character within the meaning of that provision, it must serve to identify the product or service in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish that product or service from those of other undertakings (judgments of 29 April 2004, *Henkel* v *OHIM*, C‐456/01 P and C‐457/01 P, EU:C:2004:258, paragraph 34, and of 28 January 2015, *Enercon* v *OHIM**(Gradient of five shades of the colour green)*,T‐655/13, not published, EU:T:2015:49, paragraph 22).

28      It should also be borne in mind that, in order to constitute a trade mark, colours or colour combinations must satisfy three conditions. First, they must constitute a sign. Second, that sign must be capable of being represented graphically. Third, the sign must be capable of distinguishing the goods or services of one undertaking from those of other undertakings (judgments of 6 May 2003, *Libertel*, C‐104/01, EU:C:2003:244, paragraph 23, and of 28 January 2015, *Gradient of five shades of the colour green*, T‐655/13, not published, EU:T:2015:49, paragraph 23; see also, to that effect, judgment of 24 June 2004, *Heidelberger Bauchemie*, C‐49/02, EU:C:2004:384, paragraph 22).

29      As regards the question whether colours or combinations of colours are capable of distinguishing the goods or services of one undertaking from those of other undertakings, it must be determined whether or not those colours or combinations of colours are capable of conveying specific information, particularly as regards the origin of a product or service (see judgments of 24 June 2004, *Heidelberger Bauchemie*, C‐49/02, EU:C:2004:384, paragraph 37; of 25 September 2002, *Viking-Umwelttechnik* v *OHIM (Juxtaposition of green and grey)*, T‐316/00, EU:T:2002:225, paragraph 23; of 9 July 2003, *Stihl* v *OHIM (Combination of orange and grey)*, T‐234/01, EU:T:2003:202, paragraph 26); and of 28 January 2015, *Gradient of five shades of the colour green*, T‐655/13, not published, EU:T:2015:49, paragraph 24).

30      In that regard, it should be borne in mind that, whilst colours are capable of conveying certain associations of ideas, and of arousing feelings, they possess little inherent capacity for communicating specific information, especially since they are commonly and widely used, because of their appeal, in order to advertise and market goods or services, without any specific message (judgments of 24 June 2004, *Heidelberger Bauchemie*, C‐49/02, EU:C:2004:384, paragraph 38, and of 28 January 2015, *Gradient of five shades of the colour green*, T‐655/13, not published, EU:T:2015:49, paragraph 25).

31      Save in exceptional cases, colours do not initially have a distinctive character, but may be capable of acquiring such character as the result of the use made of them in relation to the goods or services covered by the EU trade mark application (see order of 21 January 2016, *Enercon* v *OHIM*, C‐170/15 P, not published, EU:C:2016:53, paragraph 31 and the case-law cited). A colour per se may thus acquire, for the goods or services in respect of which registration is sought, a distinctive character in consequence of the use which has been made of it, by virtue of Article 7(3) of Regulation No 207/2009. By contrast, in the case of a colour per se, distinctiveness without any prior use is inconceivable save in exceptional circumstances, and particularly where the number of goods or services for which the mark is claimed is very restricted and the relevant market very specific (see judgment of 28 January 2015, *Gradient of five shades of the colour green*, T‐655/13, not published, EU:T:2015:49, paragraph 26 and the case-law cited).

32      In addition, in assessing the potential distinctiveness of a given colour or combination of colours as a trade mark, 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 (judgments of 6 May 2003, *Libertel*, C‐104/01, EU:C:2003:244, paragraph 60; of 24 June 2004, *Heidelberger Bauchemie*, C‐49/02, EU:C:2004:384, paragraph 42; and of 28 January 2015, *Gradient of five shades of the colour green*, T‐655/13, not published, EU:T:2015:49, paragraph 27).

33      Lastly, it should be borne in mind that the distinctive character of a sign must be assessed, first, in relation to the goods or services for which registration of the sign has been sought and, second, in relation to the perception which the relevant public has of it (judgments of 12 November 2008, *GretagMacbeth* v *OHIM**(Combination of 24 coloured squares)*, T‐400/07, not published, EU:T:2008:492, paragraph 37, and of 28 January 2015, *Gradient of five shades of the colour green*, T‐655/13, not published, EU:T:2015:49, paragraph 28).

34      The applicant’s arguments on the distinctiveness of the contested mark should be examined in the light of the above considerations.

35      With regard to the relevant public, the Board of Appeal correctly stated in point 31 of the contested decision that the goods in Class 7 covered by the contested mark, namely ‘wind energy converters and parts therefor’, are purchased by companies or individuals who intend to resell them or produce wind energy with them; the persons concerned are therefore highly qualified technical energy professionals or persons who are advised by wind energy professionals. Even if the Board of Appeal did not state it specifically, the relevant public is therefore composed of specialist business consumers with a heightened degree of attention (see, to that effect, judgment of 28 January 2015, *Gradient of five shades of the colour green*, T‐655/13, not published, EU:T:2015:49, paragraph 30). Moreover, this finding is not challenged by the applicant.

36      With regard to the contested mark, it should be noted that, as held in paragraph 35 of the first judgment of the General Court, it is clear, from both the application form and the acknowledgement of receipt of the application for registration sent by EUIPO to the applicant, that the contested mark was registered as a colour mark, which, moreover, is not challenged by the applicant. The latter could have applied to register its mark as a figurative mark had that in fact been its intention.

37      It follows that the distinctiveness of the contested mark had to be examined, as the Board of Appeal did and contrary to what the applicant contends, in the light of the category chosen by the applicant, without any possibility of re-categorising the mark (see, to that effect, order of 21 January 2016, *Enercon* v *OHIM*, C‐170/15 P, not published, EU:C:2016:53, paragraphs 14 to 24).

38      If the General Court were required to examine the distinctiveness of a mark for which registration has been sought, not only in the light of the category chosen by the applicant in its application, but also in the light of all other potentially relevant categories, the applicant’s obligation to indicate the category of mark for which registration is sought and the impossibility pursuant to Article 43(2) of Regulation No 207/2009 of subsequently amending that category would be deprived of any practical effect (order of 21 January 2016, *Enercon* v *OHIM*, C‐170/15 P, not published, EU:C:2016:53, paragraph 29).

39      Therefore, the Board of Appeal did not make an error by assessing the contested mark’s distinctiveness according to the category chosen and indicated in the application for registration, and not, as the applicant contends, according to the category as perceived by the relevant public (see, to that effect, order of 21 January 2016, *Enercon* v *OHIM*, C‐170/15 P, not published, EU:C:2016:53, paragraph 26).

40      Consequently, as EUIPO correctly observes, the upright trapezoidal shape is not part of the subject matter of the protection sought and that element does not set contours to the colours, but only serves to indicate how the colours will be applied on the goods at issue. The protection sought is thus for a specific combination of colours applied on the lower section of a shaft, irrespective of the shape of that shaft, which is not part of the subject matter of the protection sought.

41      It is, therefore, in the light of the case-law relating to colour marks that it is now appropriate to assess whether the Board of Appeal erred in considering that the contested mark had no distinctive character with regard to the goods at issue.

42      In this regard, the Board of Appeal noted, in point 32 of the contested decision, that the contested mark is composed of five different shades of the simple and popular primary colour green, and white. According to the Board of Appeal, green is associated with nature inasmuch as it is the principal colour of vegetation. As wind energy converters are often located in green areas, the use of the colour green should enable the contrast between the vegetation and the goods at issue to be reduced. The contested mark thus conveys exclusively an aesthetic message, which is not recognised as a reference to their origin.

43      The Board of Appeal also considered, at point 33 of the contested decision, that the colour green refers to the fact that wind energy converters are ecological or environmentally friendly; it accordingly took the view that green, whether represented as a single colour or as different shades and white, would not prevent the relevant public from understanding these colours as referring to the ecological nature of wind energy converters. Finally, in point 34 of the contested decision, the Board of Appeal indicated that the arrangement of colours is a uniform and logical, and thus entirely mundane, blending from dark to light green then white.

44      The applicant submits to the contrary that, given the specific combination of five different colours and in view of its overall shape consisting of a slender, upright trapezoidal surface, the contested mark is capable of indicating the origin of the goods at issue to the relevant public. It also submits that the distinctive character of a mark must not be equated with the originality of that mark.

45      On this point, it should be noted that the Board of Appeal did not err in finding that the contested mark, which is composed of five shades of the colour green and of white, applied to wind energy converters and parts thereof, conveyed exclusively an aesthetic message as a decorative element of those goods and therefore could not indicate the commercial origin of goods within the meaning of the case-law cited at paragraph 29 above.

46      It is also correct that green, as the colour of nature, refers to the fact that the goods at issue are ecological or environmentally friendly.

47      It must therefore be held that, even if the contested mark — composed of five shades of the colour green and white — cannot be exclusively regarded as referring to the ecological nature of the goods it covers, the fact remains that this use of the colour green is known to the relevant public and will prevent that public from considering it as an indication of origin of the goods (see, to that effect, judgment of 28 January 2015, *Gradient of five shades of the colour green*, T‐655/13, not published, EU:T:2015:49, paragraph 40).

48      Moreover, contrary to what the applicant submits, the contested mark is composed of five shades of the same colour, green, and white, and not of five different colours and white. It follows that that gradation will be considered as a blending rather than a combination of five different colours (judgment of 28 January 2015, *Gradient of five shades of the colour green*, T‐655/13, not published, EU:T:2015:49, paragraph 36).

49      As the Court has already held, the colour green, even in five different shades, will — contrary to what the applicant submits — enable the contrast between vegetation and wind energy converters to be reduced (judgment of 28 January 2015, *Gradient of five shades of the colour green*, T‐655/13, not published, EU:T:2015:49, paragraph 35). The presence of the colour white does not affect that conclusion in any way, given the neutrality of that colour.

50      What is more, the arrangement of the colours on the lower part of the shaft is also devoid of any distinctive character, and is only an aesthetic consideration to enable the goods to better blend in to their environment (see, to that effect, judgment of 28 January 2015, *Gradient of five shades of the colour green*, T‐655/13, not published, EU:T:2015:49, paragraph 38). Indeed, it is undisputed that wind turbines are not installed in urban areas, but in agricultural or forest areas.

51      The Court concurs with the Board of Appeal’s finding that, given that wind energy converters and parts therefor are high value capital goods, the specialist consumers who constitute the relevant public for goods in Class 7 will neither identify nor purchase that equipment by reference to its decoration or external presentation, but will be guided by precise and accurate information on the origin of the goods (judgment of 28 January 2015, *Gradient of five shades of the colour green*, T‐655/13, not published, EU:T:2015:49, paragraph 41).

52      It follows from the foregoing that the single plea must be rejected and the action dismissed in its entirety.

**Costs**

53      Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.

On those grounds,

THE GENERAL COURT (Eighth Chamber)

hereby:

1.      **Dismisses the action;**

2.      **Orders Enercon GmbH to pay the costs.**

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| Collins | Barents | Passer |

Delivered in open court in Luxembourg on 3 May 2017.

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| E. Coulon | | A. M. Collins |

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| Registrar | | President |

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[\*](#Footref*)       Language of the case: English.