Judgment — ECLI:EU:T:2009:417
Date: 2009-10-28
Language of the case: English
Court formation: Eighth Chamber
Based on: Treaty establishing the European Economic Community (1957)
Subject matter: Trade marks;Intellectual, industrial and commercial property
Concepts: Statement of reasons;Acquisition of distinctive character through use;Figurative marks
Procedure: Action for annulment - unfounded
Origin: Italy

Summary of the Judgment 1. Community trade mark – Definition and acquisition of the Community trade mark – Absolute grounds for refusal – Marks devoid of any distinctive character – Exception – Distinctive character acquired through use (Council Regulation No 40/94, Art. 7(1)(b) and (3)) 2. Community trade mark – Definition and acquisition of the Community trade mark – Absolute grounds for refusal – Marks devoid of any distinctive character – Exception – Distinctive character acquired through use – Criteria for assessment (Council Regulation No 40/94, Art. 7(3)) 3. Community trade mark – Surrender, revocation and invalidity – Absolute grounds of invalidity – Registration contrary to Article 7(1)(b) of Regulation No 40/94 – Exception – Distinctive character acquired through use (Council Regulation No 40/94, Arts 7(1)(b) and (3) and 51(1)(a) and (2)) 4. Community trade mark – Procedural provisions – Statement of reasons for decisions – Aim (Council Regulation No 40/94, Art. 73) 1. Although a Community trade mark in respect of which there is an absolute ground for refusal under Article 7(1)(b) of Regulation No 40/94 on the Community trade mark throughout the Community must have become distinctive through use likewise throughout the Community in order to be registrable under Article 7(3) of that regulation, the same types of evidence do not have to be provided in respect of each Member State. The absence of an opinion poll designed to assess the way in which the mark at issue was perceived by the relevant public in the European Union does not preclude a sign’s being shown to have acquired distinctive character through use, as other evidence may serve to show that that is the case. It is not absolutely necessary to carry out an opinion poll for the purposes of concluding that a sign has acquired distinctive character through use. (see paras 39-41) 2. On a market where the goods constitute industrial goods the price of which is high and the purchase of which is preceded by a process during which the consumer inquires attentively about the range on offer by comparing and inspecting the various competing models, it is not necessary for a mark to achieve a large market share for it to be possible to conclude that the relevant consumers have retained it in their minds. It is sufficient that the mark at issue be proved to have a strong and long-lasting presence on the market. (see paras 43-44) 3. Registration as a Community trade mark of the figurative mark representing a combination of the colours green and yellow for ‘Attached, pushed or self-propelled agricultural and forestry machines’ and ‘Self-propelled agricultural and forestry machines, in particular farm tractors, small tractors, land tractors and trailers’ in Classes 7 and 12 of the Nice Agreement should not have been refused on account of the absolute ground for refusal under Article 7(1)(b) of Regulation No 40/94 on the Community trade mark in so far as it was proved to the required legal standard that that mark had become distinctive through use within the terms of Article 7(3) of that regulation by the date on which the application for registration was filed. (see para. 62) 4. The statement of reasons required under Article 73 of Regulation No 40/94 on the Community trade mark must show in a clear and unequivocal manner the reasoning of the author of the act. That duty has two purposes: to allow interested parties to know the justification for the measure so as to enable them to protect their rights and to enable the Community judicature to exercise its power to review the legality of the decision. A contradiction in the statement of the reasons on which a decision is based constitutes a breach of the obligation laid down in Article 73 of Regulation No 40/94 such as to affect the validity of the measure in question if it is established that, as a result of that contradiction, the addressee of the measure is not in a position to ascertain, wholly or in part, the real reasons for the decision and, as a result, the operative part of the decision is, wholly or in part, devoid of any legal justification. (see paras 67-68)