Judgment — ECLI:EU:T:2002:243
Date: 2002-10-09
Language of the case: German
Court formation: Second Chamber
Based on: Treaty establishing the European Economic Community (1957)
Subject matter: Trade marks;Intellectual, industrial and commercial property
Concepts: Registration procedure;Signs of which a trade mark may consist;Statement of reasons;Actions before the Community Courts;Other marks
Procedure: Action for annulment - unfounded;Action for annulment - successful;Action for annulment - inadmissible
Origin: Germany

Summary of the Judgment 
1. Community trade mark — Registration procedure — Withdrawal, restriction and 
amendment of the trade mark application — Application to restrict the list of goods 
and services — Detailed rules — Application made orally before the Court of First 
Instance — Application that does not comply with those rules and having the effect of 
altering the subject-matter of the dispute 
(Council Regulation No 40/94, Art. 44; Commission Regulation No 2868/95 Art 1 
Rule 13) 
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SUMMARY — CASE T-173/00 
2. Community trade mark — Definition and acquisition of the Community trade 
mark — Signs capable of constituting a trade mark — Colours or colour com­
binations — Condition — Distinctive character 
(Council Regulation No 40/94, Art. 7(1)(b)) 
3. Community trade mark — Definition and acquisition of the Community trade 
mark — Absolute grounds for refusal — Marks devoid of any distinctive char­
acter — Signs consisting of colours or colour combinations — Distinctive char­
acter — Assessment criteria 
(Council Regulation No 40/94, Art. 7(1)(b)) 
4. Community trade mark — Definition and acquisition of the Community trade 
mark — Absolute grounds for refusal — Marks devoid of any distinctive char­
acter — Shade of orange HKS7 
(Council Regulation No 40/94, Art. 7(1)(b)) 
5. Community trade mark — Procedural provisions — Statement of reasons for 
decisions — Purpose 
(Council Regulation No 40/94, Art. 73) 
1. Under Article 44 of Regulation 
No 40/94 on the Community trade 
mark, and Rule 13 of Regulation 
No 2868/95 implementing it, on the 
applicant's right to restrict the list of 
goods or services specified in the appli­
cation, the list may be restricted only in 
accordance with certain detailed rules. 
Where an application made by the 
applicant orally at the hearing before 
the Court of First Instance does not 
comply with those rules, it cannot be 
considered to be an application for 
amendment within the meaning of 
those provisions. Furthermore, to 
allow such an application would be 
tantamount to changing the subject 
matter of the dispute pending before 
the Court and so infringe the principle 
of audi alteram partem. That does not 
preclude the possibility of a partial 
withdrawal, however. 
(see paras 11-13) 
2. Colours or colour combinations per se 
may constitute Community trade 
marks within the meaning of Regu­
lation No 40/94 in so far as they are 
capable of distinguishing the goods or 
services of one undertaking from those 
of another. However, the fact that a 
II - 3844 
KWS SAAT v OHIM (SHADE OF ORANGE) 
category of signs is, in general, capable 
of constituting a trade mark does not 
mean that signs belonging to that 
category necessarily have distinctive 
character for the purposes of 
Article 7(1)(b) of that regulation in 
relation to a particular product or 
service. 
(see paras 25-26) 
3. Whilst Article 7(1)(b) of Regulation 
No 40/94, which provides that 'trade 
marks which are devoid of any dis­
tinctive character' are not to be regis­
tered, does not draw any distinction 
between different types of sign, the 
relevant public's perception is not 
necessarily the same in the case of a 
sign composed of a colour or colour 
combination per se as it is in the case of 
a word or figurative mark, where the 
sign is independent of the appearance 
of the goods which it identifies. While 
the public is accustomed to perceiving 
word or figurative marks immediately 
as signs identifying the commercial 
origin of the goods, the same is not 
necessarily true where the sign forms 
part of the external appearance of the 
goods or where the sign is composed 
merely of a colour or colours used to 
signal services. 
Furthermore, in so far as the relevant 
public recognises the sign as an indi­
cation of the commercial origin of the 
goods or services, the fact that it serves 
several purposes simultaneously, other 
than that of indicating commercial 
origin, including a technical or decor­
ative function, is immaterial to its 
distinctive character. 
(see paras 29-30) 
4. Under Article 7(1)(b) of Regulation 
No 40/94 on the Community trade 
mark, 'trade marks which are devoid 
of any distinctive character' are not to 
be registered. With regard to the regis­
tration sought in respect of the shade of 
orange per se with standard reference 
HKS7 for agricultural, horticultural 
and forestry goods, the colour is not 
distinctive. The use of colours, includ­
ing the shade of orange claimed or very 
similar shades, for those goods is not 
rare for such goods, in particular as 
regards seeds. The sign applied for will 
therefore not enable the relevant public 
immediately and with certitude to dis­
tinguish the goods of the undertaking 
in question from those of other under­
takings which are coloured other 
shades of orange. 
II - 3845 
SUMMARY — CASE T-173/00 
Nor is the sign distinctive for seed 
treatment installations. Being common­
place, the colour orange will not enable 
the relevant public to distinguish 
immediately and with certainty the 
installations of the undertaking in 
question from machines in similar 
shades of orange with a different com­
mercial origin. It will thus perceive the 
colour claimed as merely an element of 
the finish of the goods in question. 
On the other hand, as regards the 
registration sought for technical and 
business consultancy in the area of 
plant cultivation, in particular in the 
seed sector, the sign composed of the 
shade of orange per se is capable of 
enabling the relevant public to distin­
guish the services concerned from those 
of a different commercial origin when 
they come to make a choice on the 
occasion of a subsequent purchase. 
First, since a colour does not attach to 
the service itself, services by nature 
having no colour, nor does it confer 
any substantive value, the relevant 
public can distinguish between use of 
a colour as mere decoration and its use 
as an indication of the commercial 
origin of the service. Secondly, in so 
far as it has not been established that 
the colour fulfils other more immediate 
functions, the colour is easily and 
instantly memorable to the relevant 
public as a distinctive sign for the 
services specified. 
(see paras 33, 40, 42, 44, 46) 
5. The duty of the Office for Harmon­
isation in the Internal Market (Trade 
Marks and Designs) to state the rea­
sons on which its decisions are based, 
which is laid down in the first sentence 
of Article 73 of Regulation No 40/94 
on the Community trade mark, must 
enable the applicant, if need be, to take 
cognisance of the reasons for refusing 
its application for registration and to 
challenge the contested decision effec­
tively. 
(see paras 54-55) 
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