Judgment;Summary — ECLI:EU:C:2020:813
Date: 2020-10-08
Language of the case: Swedish
Court formation: Tenth Chamber
Subject matter: Approximation of laws
Procedure: Reference for a preliminary ruling
Origin: Sweden

summary, that the marks applied for are merely decorative in 
nature, that they are not perceived as designating the services applied for and that 
they therefore have no distinctive character. 
The case before the Patent- och marknadsdomstolen (Patent and Market 
Court) 
4. Östgötatrafiken appealed against the PRV’s decisions to the Patent- och 
marknadsdomstolen (Patent and Market Court) and clarified its application as 
follows. The marks applied for are known as ‘position trade marks’ and consist of 
elliptical bands of different sizes in red, white and orange placed in a given 
position, size and relative to each other, on buses and trains used to perform the 
services. 
REQUEST FOR A PRELIMINARY RULING OF 14. 6. 2019 – CASE C-456/19 
 
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5. Östgötatrafiken submitted the following images of the marks applied for, in 
which, as shown in the images, the contours of the vehicles were reproduced as 
dotted lines in order to make it clear that the shapes of the vehicles are not to be 
covered by the protection of the trade mark.  
[Or 5] 
 
Side view 
 
 
Front view Rear view 
  
 
Side view 
 
  
Front view Rear view 
  
ÖSTGÖTATRAFIKEN 
 
5 
 
Side view 
 
 
Front and rear views 
 
6. [Or 6] In summary, Östgötatrafiken submitted as follows. The marks applied for 
have a style corresponding to those figurative marks already registered under 
registration Nos 363520 to 363623. The fact that the elements of the marks now 
applied for are placed on vehicles and are of a certain size and breadth and appear 
in specific places on those vehicles should not give rise to a different assessment 
of the distinctive character of the marks now applied for. Transport companies 
paint their vehicles in different ways and it can be deemed to be widely recognised 
that, to a great extent, all people who have come into contact with public transport 
[vehicles] also understand that painting or graphics on public transport [vehicles] 
indicate a particular commercial origin. 
7. In summary, PRV submitted as follows. The protection of the figurative elements 
of the marks applied for has not been sought in the abstract, but [for figurative 
elements] placed on vehicles as set out in the application, or in any case in a 
corresponding manner if it is a position mark. The assessment of the distinctive 
character must therefore be based on the marks as a whole and not on the 
figurative elements in isolation that are reproduced on the vehicles. It is widely 
known that commercial transport vehicles such as trains and buses are often 
decorated and painted in different ways. Therefore, consumers cannot, without it 
first being necessary that they become accustomed to the marks, immediately 
perceive them as a sign of a commercial origin, but will rather perceive them as 
pure decoration. Taking into account the variety of painting and decoration of 
transport vehicles present in the industry concerned, the applicant’s marks cannot 
be regarded as departing sufficiently from the norm or customs of the economic 
sector concerned. 
8. The Patent- och marknadsdomstolen (Patent and Market Court) dismissed 
Östgötatrafiken’s appeals. In the view of the Patent- och marknadsdomstolen 
(Patent and Market Court), the marks applied for were, by their placing on trains 
or buses respectively, so strongly linked to the transport services in Class 39 for 
REQUEST FOR A PRELIMINARY RULING OF 14. 6. 2019 – CASE C-456/19 
 
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which protection was sought that they were to be regarded as coinciding with the 
appearance of the goods or embodying the services in question. The Patent- och 
marknadsdomstolen (Patent and Market Court) found that since, under such 
conditions, consumers are not regarded as being used to making assumptions 
about the commercial origin of goods, it is necessary that, to have distinctive 
character, [Or 7] the marks depart significantly from the norm or customs of the 
economic sector concerned. 
9. In the view of the Patent- och marknadsdomstolen (Patent and Market Court), 
neither the evidence relied on nor any other submissions made in the case 
provided sufficient proof that the colour and shape of the marks differ so much 
from the manner in which other companies choose to decorate their vehicles that 
the relevant public can be assumed to understand the marks as an indication of 
commercial origin. On the contrary, the Patent- och marknadsdomstolen (Patent 
and Market Court) found that, on an overall assessment, the signs should be 
understood as being decorative. 
The case before the Patent- och marknadsöverdomstolen (Patent and Market 
Court of Appeal) 
10. Östgötatrafiken has appealed against the decision of the Patent- och 
marknadsdomstolen (Patent and Market Court) to the Patent- och 
marknadsöverdomstolen (Patent and Market Court of Appeal) and claimed that 
the Patent- och marknadsdomstolen should set aside the decision of the lower 
court and remit the applications to the PRV for further examination. 
11. The parties relied essentially on the same facts before the Patent- och 
marknadsöverdomstolen (Patent and Market Court of Appeal) as before the 
Patent- och marknadsdomstolen (Patent and Market Court). 
Law 
EU law 
12. Under Article 3 of Directive (EU) 2015/2436 of the European Parliament and of 
the Council of 16 December 2015 to approximate the laws of the Member States 
relating to trade marks (the Trade Marks Directive), a trade mark may consist of 
any signs, in particular words, including personal names, or designs, letters, 
numerals, colours, the shape of goods or of the packaging of goods, or sounds, 
provided that such signs are capable of: 
(a) distinguishing the goods or services of one undertaking from those of other 
undertakings; and  
[Or 8] (b) being represented on the register 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. 
ÖSTGÖTATRAFIKEN 
 
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13. Under Article 4(1)(b) of the Trade Marks Directive, trade marks which are devoid 
of any distinctive character may not be registered. 
Swedish law 
14. Under the first subparagraph of Chapter 1, Paragraph 4, of the varumärkeslagen 
(2010:1877) (Trade Marks Act (2010:1877); ‘the VML’), which implements the 
provisions of the directive, a trade mark may consist of any sign that has 
distinctive character and which can be clearly reproduced in the Register of Trade 
Marks of the PRV. In accordance with the second subparagraph thereof, signs 
means in particular words, including personal names, and designs, letters, 
numerals, colours, sounds and the shape or layout of goods or its packaging. 
15. Under Chapter 2, Paragraph 5, of the VML, a trade mark to be registered must 
have distinctive character in relation to the goods or services which the mark 
covers. 
16. Under the first subparagraph of Chapter 1, Paragraph 5, of the VML, a trademark 
is to be deemed to have distinctive character if it is able to distinguish goods or 
services supplied in one trade from those supplied in another. 
The need for a preliminary ruling 
17. It follows from Article 3 of the directive that a basic requirement in order that a 
sign may constitute a mark is that it is capable of distinguishing the goods or 
services of one undertaking from those of other undertakings. In accordance with 
the case law of the Court of Justice of the European Union, a trade mark's 
distinctiveness must be assessed by reference to the goods or services in respect of 
which registration is sought and how the relevant public, which consists of 
average consumers of [Or 9] those goods or services, who are reasonably well 
informed and reasonably observant and circumspect, perceive the trade mark (see, 
for example, Joined Cases C-53/01 to C-55/01, Linde and Others, 
EU:C:2003:206, paragraph 41, and Case C-363/99, Koninklijke KPN Nederland, 
EU:C:2004:86, paragraph 34). 
18. It also follows from the case-law of the Court of Justice that, when applying those 
criteria, regard must be had to the fact that the average consumer’s perception is 
not necessarily the same in the case of a three-dimensional mark consisting of the 
appearance of the product itself as it is in the case of a word or figurative mark 
consisting of a sign which is unrelated to the appearance of the products it 
denotes. That is the case since average consumers are not in the habit of making 
assumptions about the origin of goods on the basis of their shape or the shape of 
their packaging in the absence of any graphic or word element, and it could 
therefore prove more difficult to establish distinctiveness in relation to such a 
three-dimensional mark than in relation to a word or figurative mark. (See, for 
REQUEST FOR A PRELIMINARY RULING OF 14. 6. 2019 – CASE C-456/19 
 
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example, C-456/01 P and C-457/01 P, Henkel v OHIM, EU:C:2004:258, 
paragraph 38, and C-l36/02 P, Mag Instrument v OHIM, EU:C:2004:592, 
paragraph 30.) 
19. In that context, the Court of Justice has held that, with regard to three-dimensional 
trade marks, the trade mark must depart significantly from the norm or customs of 
the economic sector concerned in order for the mark to be regarded as having a 
distinctive character (see, for example, C-456/01 P and C-457/01 P, Henkel v 
OHIM, EU:C:2004:258, paragraph 39, C-136/02 P, Mag Instrument v OHIM, 
EU:C:2004:592, paragraph 31, and C-473/01 P and C-474/01 P Procter & 
Gamble v OHIM, EU:C:2004:260, paragraph 37). 
20. The Court of Justice has applied the principles developed in the case-law referred 
to in paragraphs 18 and 19 above not only to three-dimensional trade marks, but 
also to figurative marks in the form of a two-dimensional representation of the 
product concerned (see C-144/06 P, Henkel v OHIM, EU:C:2007:577, paragraph 
37, C-25/05 P, Storck v OHIM, EU:C:2006:422, paragraph 29 and C-417/16 P, 
Storck v EUIPO, EU:C:2017:340, paragraphs 36 to 43), as well as to signs 
composed of the appearance of the surface of the packaging of a liquid product 
(see C-344/10 P and [Or 10] C-345/10 P, Freixenet v OHIM, EU:C:2011:680, 
paragraph 48), and to a sign in the form of a design affixed to the surface of a 
product (see C 445/02 P, Glaverbel v OHIM, EU:C:2004:393, paragraphs 23 to 
24). 
21. The principles have also been applied by the General Court in a great number of 
cases on so-called ‘position brands’ (see, inter alia, T-547/08, X Technology Swiss 
v OHIM, EU:T:2010:235, paragraphs 25 to 27, T-331/12, Sartorius Lab 
Instruments v OHIM, EU:T:2014:87, paragraphs 20 to 22, T-85/13 and K-Swiss v 
OHIM, EU:T:2014:509, paragraphs 16 to 20). 
22. The principles have also been applied by the Court of Justice, by analogy, to a 
trade mark consisting of a representation of the layout of a retail store, for services 
consisting in services relating to those goods but which do not form an integral 
part of the offer for sale thereof (see C-421/13, Apple, EU:C:2014:2070). The 
Court of Justice ruled that such a sign may be capable of distinguishing the goods 
or services of one undertaking from those of another undertaking when the 
depicted layout departs significantly from the norm or customs of the economic 
sector concerned (see paragraph 20). 
23. With the exception of Case C-421/13 (Apple), the Court of Justice has applied the 
principles developed as regards three-dimensional trademarks only to trade marks 
designating goods. The case C-421/13 (Apple) does not specify under which 
conditions the requirement for a significant departure from the norm or customs of 
the economic sector concerned must be applied in the case of a trade mark which 
designates a service. 
ÖSTGÖTATRAFIKEN 
 
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24. The decisive factor for the applicability of the case-law referred to in paragraphs 
18 to 21 above is whether the sign is not independent of the appearance of the 
goods which the sign covers. As regards trade marks which designate services, 
those services, according to the Patent- och marknadsöverdomstolen (Patent and 
Market Court of Appeal), have by their nature no form or packaging. It is not 
apparent from the abovementioned case of Apple whether [Or 11] the Court of 
Justice has considered whether or not the mark coincided with or was not 
independent of the appearance of specific physical items of relevance to the 
services covered by the mark. 
25. According to Östgötatrafiken, the marks applied for are so-called ‘position marks’ 
and have been described as ellipses of different sizes in red, white and orange 
placed in a particular position, size and with a particular relation to each other, on 
buses and trains that are used to perform the services. Östgötatrafiken has not 
claimed exclusive rights to the form of the vehicles as such. As is apparent from 
the images of the marks applied for - see point 5 above - the marks applied for 
cover large areas of the vehicles. 
26. The question is whether Article 4(1)(b) of the Trade Marks Directive is to be 
interpreted as meaning that, in the circumstances of the present case, the trade 
marks must depart significantly from the norm or customs of the economic sector 
concerned in order for the mark to be regarded as having distinctive character. 
27. In order for the Patent- och marknadsöverdomstolen (Patent and Market Court of 
Appeal) to be able to rule in the case, that court needs to have answers to the 
following questions. 
Request for a preliminary ruling 
28. The questions concern the application of Article 4(1)(b) of Directive 2015/2436 of 
the European Parliament and of the Council of 16 December 2015 to approximate 
the laws of the Member States relating to trade marks and are as follows. 
I. Must Article 4(1)(b) of the Trade Marks Directive be interpreted as meaning 
that, in the case of an application for registration of a trade mark which 
designates services and where the application relates to a sign, placed in a 
particular position, which covers large areas of the physical objects used to 
perform the services, it must be assessed whether the mark is not 
independent of the appearance of the objects concerned?  
II. [Or 12] If question I is answered in the affirmative, is it necessary for the 
trade mark to depart significantly from the norm or customs of the economic 
sector concerned in order for the mark to be regarded as having distinctive 
character? 
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