Judgment — ECLI:EU:T:2017:852
Date: 2017-11-30
Language of the case: English
Court formation: Second Chamber
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment - unfounded
Origin: Austria

summary of the pleas in law relied on, and that no new plea in law may be introduced in the course of proceedings unless it is based on matters of law or of fact which come to light in the course of the procedure. However, a plea which constitutes an amplification of a submission previously made, either expressly or by implication, in the original application and is closely linked to it must be declared admissible. The same applies to a submission made in support of a plea in law (see, to that effect, and by analogy, judgment of 21 March 2002, Joynson v Commission, T‑231/99, EU:T:2002:84, paragraph 156). 108 In the present case, the complaint regarding the disproportionate nature of the outcome resulting from EUIPO’s application of the judgment of 24 June 2004, Heidelberger Bauchemie (C‑49/02, EU:C:2004:384) as regards the compatibility of the graphic representation of a colour per se mark with Article 4 of Regulation No 207/2009 follows indirectly, on the one hand, from the applicant’s claims that there is no need for an explicit description to accompany the graphic representation of the contested marks, and, on the other, from the non-existence of a legal requirement to that effect, claims which had already been put forward at the application stage. 109 It follows from this that the plea relating to the principle of proportionality raised by the intervening association in its statement in intervention must also be considered admissible, in accordance with Article 142(1) of the Rules of Procedure. 110 As to the substance of this plea, it must be stated that, in so far as the arguments advanced by the applicant in that context seek to criticise the different treatment of colour per se marks as compared with other categories of trade mark, those arguments actually relate to the principle of equal treatment and must, accordingly, be rejected, as is apparent from paragraphs 94 to 106 above. 111 Moreover, as regards the criticism that the Board of Appeal’s preferred interpretation of the judgment of 24 June 2004, Heidelberger Bauchemie (C‑49/02, EU:C:2004:384) involves an overly strict application of the requirements applicable to the graphic representation of colour per se marks, given the objectives of those requirements, and an unnecessarily high threshold, it must be borne in mind that the principle of proportionality requires that measures adopted by EU institutions do not exceed the limits of what is appropriate and necessary in order to attain the objectives legitimately pursued by the legislation in question; when there is a choice between several appropriate measures recourse must be had to the least onerous, and the disadvantages caused must not be disproportionate to the aims pursued (judgments of 12 July 2001, Jippes and Others, C‑189/01, EU:C:2001:420, paragraph 81, and of 22 January 2013, Sky Österreich, C‑283/11, EU:C:2013:28, paragraph 50). 112 However, first, as has been noted in paragraphs 41, 43 and 44 above, the main objectives pursued by Article 4 of Regulation No 207/2009 are, in particular, to safeguard the function of an EU trade mark as an indication of origin, which presupposes that it is perceived unambiguously, uniformly and durably; to ensure legal certainty, which presupposes that the precise subject matter of the protection afforded by the EU trade mark, both to its proprietor and to the competent authorities and other economic operators, is defined; and to uphold the general interest in not unduly restricting the availability of colours and in preventing the abuse of EU trade mark law for the purpose of obtaining an unfair competitive advantage. 113 Second, by highlighting the requirements of clarity and precision for a trade mark consisting of a combination of colours per se in order to prevent numerous different combinations, the Court of Justice weighed the proportionality of that requirement in the light of the objectives pursued by that provision. 114 Third, the proportionate nature of that requirement for marks consisting of a combination of colours per se flows directly from the nature of those marks, in accordance with the analysis in paragraphs 84 to 86 above. In order for the precise subject matter of the protection afforded by such a mark to be defined, its representation must, even at the stage of the application for registration, be objective and represent the arrangement in the form in which the consumer will perceive and recall it. 115 In view of the foregoing, it must be concluded that the application, in the present case, of the requirements laid down by the judgment of 24 June 2004, Heidelberger Bauchemie (C‑49/02, EU:C:2004:384) was not disproportionate given the aims of those requirements. 116 Furthermore, if EUIPO were to agree to protect a combination of two or more colours allowing, as a matter of fact, numerous different combinations, that approach would amount to affording protection that would be disproportionate in the light of the aim pursued by trade mark law, which is to safeguard the function of indicating the origin of goods in commercial practice in the interest of consumers. 117 Fourth, the intervening association asserts that the breach of the principle of proportionality is all the more flagrant as the new Regulation 2015/2424 has dropped the requirement for a graphic representation, by introducing Article 4(b) in Regulation No 207/2009 (now Article 4(b) of Regulation 2017/1001), which now requires only that the sign be capable of being represented ‘in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor’. 118 In that regard, although Article 4(b) of Regulation No 207/2009, as amended by Regulation 2015/2424, is not applicable in the present case, suffice it to note that that argument is based on an erroneous interpretation of that provision. The new wording of Article 4 of Regulation No 207/2009, which is intended to reinforce legal certainty, is more restrictive than the previous wording, in so far as it expressly incorporates into the body of that provision the objectives identified in the judgments of 12 December 2002, Sieckmann (C‑273/00, EU:C:2002:748), and of 24 June 2004, Heidelberger Bauchemie (C‑49/02, EU:C:2004:384), and is thus perfectly consistent with that case-law and also with its application by the Board of Appeal in the contested decisions. 119 Furthermore, contrary to what is claimed by the applicant, but in common with the intervener, it must be observed that it is neither impossible nor disproportionate to require that an application for registration relating to a trade mark consisting of a combination of colours per se be represented graphically or accompanied by a description containing the systematic spatial arrangement of the colours in such a way as to enable the subject matter of the protection afforded by that mark to be grasped clearly and precisely. 120 Having regard to all of the foregoing, the third part of the first plea relating to breach of the principle of proportionality must be rejected as unfounded, as, accordingly, must the first plea in law in its entirety. Second plea in law, alleging breach of the principle of protection of legitimate expectations 121 In the context of the present plea, the applicant, supported by the intervening association, criticises the Board of Appeal for having concluded that the fact that the examiner accepted, or even suggested, the wording of the description at the time when the applications for registration of the contested marks were filed did not support a legitimate expectation and, moreover, that an established practice of EUIPO either did not exist or did not amount to information on which a legitimate expectation could be based. 122 Last, the applicant submits that, having registered the contested marks on the basis of the distinctiveness they had acquired through use, EUIPO implicitly ruled on the compliance of those marks with Article 4 of Regulation No 207/2009. 123 EUIPO and the intervener dispute those arguments. 124 In accordance with Article 52(1)(a) of Regulation No 207/2009, an EU trade mark is to be declared invalid on application to EUIPO or on the basis of a counterclaim in infringement proceedings where the EU trade mark has been registered contrary to the provisions of Article 7 of that regulation. 125 According to settled case-law, the possibility of relying on the principle of the protection of legitimate expectations is open to any individual whom an institution, by giving him precise assurances, has led to entertain legitimate expectations. Regardless of the form in which it is communicated, precise, unconditional and consistent information which comes from an authorised and reliable source constitutes such assurance (see judgment of 5 April 2006, Kachakil Amar v OHIM (Longitudinal line ending with a triangle), T‑388/04, not published, paragraph 26 and the case-law cited). 126 However, such assurances must comply with the applicable provisions and rules, since promises which do not take account of those provisions of EU law cannot give rise to a legitimate expectation on the part of the person concerned (see, to that effect, judgment of 27 June 2012, Interkobo v OHIM – XXXLutz Marken (my baby), T‑523/10, EU:T:2012:326, paragraph 83 and the case-law cited). 127 In addition, it is clear from the case-law that, in order to be able to rely on the principle of the protection of legitimate expectations, an applicant must be able to show expectations based on specific assurances by the administration such as to give rise to pardonable confusion in the mind of a party acting in good faith and with all the diligence required of a normally informed operator (see judgment of 9 September 2011, dm-drogerie markt v OHIM — Distribuciones Mylar (dm), T‑36/09, EU:T:2011:449, paragraph 114 and the case-law cited). 128 In the present case, in paragraph 29 of the contested decisions, in the first place, the Board of Appeal considered that the applicant could not rely on the principle of protection of legitimate expectations, since the suggestions for a description given by the examiner upon the application for registration being filed did not amount to precise, unconditional and consistent information that could lead the applicant to entertain legitimate expectations as regards the validity of the registration of the contested marks. 129 In the case of the first contested mark, it is apparent from the file that the examiner asked the applicant’s representative, in telephone conversations that took place between 11 August and 3 September 2004, to clarify the application for registration, taking into account the registration requirements identified by the judgment of 24 June 2004, Heidelberger Bauchemie (C‑49/02, EU:C:2004:384), and, in particular, to add information regarding the proportions of the two colours concerned and the way in which those colours would appear. Following that request by the examiner, the applicant filed the description referred to in paragraph 3 above on 11 October 2004, and the first contested mark was registered on 25 July 2005. 130 In the case of the second contested mark, as noted in paragraphs 11 to 13 above, following the examiner’s notice of absence of formal requirements, asking that the proportions in which each colour would be applied to the products, and the way in which those colours would appear, be specified, the applicant provided a description stating that the ‘colours will be applied in equal proportion and juxtaposed to each other’. On 8 March 2011, the second contested mark was registered. 131 Those facts are not disputed by EUIPO. 132 In that regard, it should be stated that, as EUIPO confirmed at the hearing, in both cases, the examiner merely asked the applicant to clarify the description provided by indicating the proportions of the two colours concerned and how they would appear. The clarification provided by the applicant was subsequently accepted. However, that does not mean that the examiner, in both cases, gave precise, unconditional and consistent assurances that those descriptions met the legal requirements laid down by Article 4 of Regulation No 207/2009. 133 First, although, on two occasions, the examiner accepted two descriptions that did not comply with the requirements identified by the judgment of 24 June 2004, Heidelberger Bauchemie (C‑49/02, EU:C:2004:384), those circumstances cannot preclude the contested marks being declared invalid if they were registered in breach of one of the absolute grounds for refusal provided for in Article 7 of Regulation No 207/2009. 134 Second, even on the assumption that the information supplied by the examiner may be described as precise and unconditional assurances, it is apparent from the case-law referred to in paragraph 126 above that, in so far as such assurances did not comply with the applicable provisions, they could not sustain a legitimate expectation. 135 Third, the registration of an EU trade mark, whether or not preceded by discussions concerning the information to be supplied in order to ensure that the application is in order and complete, cannot protect the proprietor of that mark from the risk of its being declared invalid pursuant to Article 52(1) of Regulation No 207/2009. It is apparent from the case-law mentioned in paragraph 126 above that the requirement of legal certainty, which is the general interest pursued by that provision, necessarily outweighs any legitimate expectation and the private interest that an EU trade mark proprietor might possibly be able to claim. 136 Furthermore, the objective of Article 52(1) of Regulation No 207/2009 is precisely to enable any errors made by examiners at the time when an application for registration is filed to be corrected, regardless of whether or not the error was preceded by discussions with the applicant for the trade mark, since, in either case, a supposedly correct registration has been completed but may yet be cancelled because of an absolute ground for invalidity, as the wording of that article makes clear. 137 In the second place, the Board of Appeal considered that the applicant was not entitled to base any legitimate expectation on EUIPO’s practice in previous decisions. 138 In that regard, as noted in paragraphs 98 and 99 above, EUIPO is under a duty to exercise its powers in accordance with the general principles of EU law. Although, in the light of the principles of equal treatment and sound administration, EUIPO must take into account the decisions already taken in respect of similar applications and must consider with especial care whether it should decide in the same way or not, the way in which those principles are applied must be consistent with respect for legality. Consequently, a person who files an application for registration of a sign as an EU trade mark cannot rely, to his advantage and in order to secure an identical decision, on any unlawful act committed to the benefit of someone else. Moreover, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be stringent and comprehensive, in order to prevent EU trade marks being improperly registered. Accordingly, such an examination must be undertaken in each individual case. The registration of a sign as an EU trade mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (see judgment of 12 December 2014, Comptoir d’Épicure v OHIM — A-Rosa Akademie (da rosa), T‑405/13, not published, EU:T:2014:1072, paragraph 63 and the case-law cited). 139 It follows from this that the Board of Appeal was right in concluding that the applicant cannot properly rely, in support of a claim of breach of the principle of protection of legitimate expectations, on previous decisions of EUIPO (see, to that effect, judgment of 12 December 2014, da rosa, T‑405/13, not published, EU:T:2014:1072, paragraph 64 and the case-law cited). 140 Moreover, the Board of Appeal did not err in recalling in paragraph 29 of the contested decisions that, according to the case-law, a mere practice, no matter how current, does not amount to precise, unconditional and consistent information within the meaning of the case-law referred to in paragraph 125 above (see judgment of 25 March 2009, Anheuser-Busch v OHIM — Budějovický Budvar (BUDWEISER), T‑191/07, EU:T:2009:83, paragraph 49 and the case-law cited). 141 Furthermore, as the Board of Appeal correctly states in paragraphs 30 to 33 of the contested decisions, the applicant cannot rely on previous decisions of EUIPO or of the Boards of Appeal or on judgments of the EU judicature, concerning EU trade marks consisting of combinations of colours per se similar to the contested marks, that are based solely on Article 7(1)(b) of Regulation No 207/2009, in order to claim that a practice exists in respect of the registrability of such trade marks for the purposes of Article 4 of that regulation. 142 It cannot be inferred from the fact that the examiner, the Board of Appeal or the EU judicature have ruled only on the lack of distinctive character of those marks that they have been deemed to comply with Article 4 of Regulation No 207/2009. Accordingly, those decisions could not be regarded as amounting to a practice on the part of EUIPO or the EU judicature of accepting applications for registration of marks of that kind as EU trade marks. Similarly, the Court must reject the applicant’s argument that, by registering the contested marks on the basis of the distinctiveness they had acquired through use, EUIPO had implicitly ruled on the compliance of those marks with Article 4 of Regulation No 207/2009. 143 In the third place, in so far as the intervening association relies on EUIPO guidelines, it has already been held that there is no basis for the proposition that these take precedence over the EU rules applicable (see, to that effect, judgment of 25 March 2009, BUDWEISER, T‑191/07, EU:T:2009:83, paragraph 48). 144 It follows from all of the foregoing that the Board of Appeal was right in concluding that the applicant could not rely on the principle of protection of legitimate expectations. 145 The second plea in law must, therefore, be rejected. Accordingly, without there being any need to rule on the admissibility of the applicant’s second head of claim, the action must be dismissed in its entirety. Costs 146 Under Article 134(1) of the Rules of Procedure, 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 form of order sought by EUIPO and the intervener. 147 Moreover, under Article 138(3) of the Rules of Procedure, the Court may order an intervener other than those referred to in Article 138(1) and (2) to bear its own costs. In the present case, the intervening association which intervened in support of the applicant must bear its own costs. On those grounds, THE GENERAL COURT (Second Chamber), hereby: 1. Dismisses the action; 2. Orders Red Bull GmbH to pay the costs, including those incurred by the European Union Intellectual Property Office (EUIPO) and by Optimum Mark sp. z o.o.; 3. Orders Marques to bear its own costs. Prek Buttigieg Berke Delivered in open court in Luxembourg on 30 November 2017. E. Coulin S. Gervasoni Registrar President * Language of the case: English.