JUDGMENT OF THE GENERAL COURT (Ninth Chamber)
24 March 2021 (*)
(EU trade mark – Invalidity proceedings – EU mark consisting of a combination of the colours grey and orange – Absolute ground for refusal – Article 4 and Article 7(1)(a) of Regulation No 40/94 (now Article 7(1)(a) of Regulation (EU) 2017/1001) – Sufficiently clear and precise graphic representation – Requirement for a systematic arrangement associating the colours in a predetermined and uniform way)
In Case T‑193/18,
Andreas Stihl AG & Co. KG, established in Waiblingen (Germany), represented by S. Völker, M. Pemsel and C. Eulenpesch, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by A. Folliard-Monguiral and V. Ruzek, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Giro Travel Company SRL, established in Roman (Romania), represented by C. Frisch, lawyer,
ACTION brought against the decision of the Second Board of Appeal of EUIPO of 23 January 2018 (Case R 200/2017-2) relating to invalidity proceedings between Giro Travel Company and Andreas Stihl,
THE GENERAL COURT (Ninth Chamber),
composed of M.J. Costeira, President, D. Gratsias and B. Berke (Rapporteur), Judges,
Registrar: R. Ūkelytė, Administrator,
having regard to the application lodged at the Court Registry on 19 March 2018,
having regard to the response of EUIPO lodged at the Court Registry on 6 June 2018,
having regard to the response of the intervener lodged at the Court Registry on 31 May 2018,
having regard to the decision of 26 July 2018 to suspend the procedure,
having regard to the measures of organisation of procedure of 14 August 2019,
further to the hearing on 18 September 2020,
gives the following
Judgment
Background to the dispute
1        On 19 December 2008, the applicant, Andreas Stihl AG & Co. KG, lodged 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), as amended, itself replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).
2        The mark for which registration was sought is the combination of colours per se, orange and grey, represented as follows:
3        The applicant sought registration of the combination of the colours orange (RAL 2010) and grey (RAL 7035) and provided the following description: ‘The colour orange is applied to the top of the housing of the chain saw and the colour grey is applied to the bottom of the housing of the chain saw.’
4        The goods in respect of which registration was applied for are in Class 7 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description:
–        Class 7: ‘Chainsaws’.
5        The EU trade mark application was published in Community Trade Marks Bulletin No 2011/084 of 3 May 2011, and was registered on 10 August 2011 under number 007472723, with the description set out in paragraph 3 above.
6        On 24 June 2015, the intervener, Giro Travel Company, filed an application for a declaration of invalidity of the mark at issue on the basis of Article 52(1)(a) of Regulation No 207/2009 (now Article 59(1)(a) of Regulation 2017/1001), read in conjunction with Article 7(1)(a),(b) and (d) of that regulation (now Article 7(1)(a), (b) and (d) of Regulation 2017/1001), and of Article 52(1)(b) of that regulation (now Article 59(1)(b) of Regulation 2017/1001).
7        By decision of 29 November 2016, the Cancellation Division rejected the application for a declaration of invalidity in its entirety, on the ground that the trade mark application satisfied the requirements laid down in Article 4 of Regulation No 207/2009 (now Article 4 of Regulation 2017/1001), read in conjunction with Article 7(1)(a) of Regulation No 207/2009. The Cancellation Division found that the graphic representation and the verbal description of the sign made it possible to identify a systematic arrangement in which the colours were used in a predetermined and uniform way.
8        On 26 January 2017, the intervener filed an appeal against the decision of the Cancellation Division.
9        By its decision of 23 January 2018 (‘the contested decision'), the Second Board of Appeal upheld the appeal, annulled the decision of the Cancellation Division and declared the trade mark at issue invalid on the basis of Article 52(1)(a) of Regulation No 207/2009.
10      As a preliminary point, the Board of Appeal stated that, unless otherwise specified, all references made in the contested decision should be seen as references to Regulation 2017/1001, codifying Regulation No 207/2009, as amended. Furthermore, in paragraph 18 of the contested decision, it stated that the regulation in force at the time when the mark at issue was filed was Regulation No 207/2009 and that it was to apply to the present proceedings.
11      Next, the Board of Appeal found that, on the one hand, the description of the mark at issue was not in itself sufficiently clear, precise, self-contained, easily accessible, intelligible or objective. Moreover, as there were numerous different shapes of chainsaws on the market, it was not clear what the scope of protection of the mark actually was. On the other hand, it found that the graphic representation of the mark at issue consisted of the horizontal positioning of the two colours orange and grey, one above the other, without shape or contours, which allowed for several different combinations of the two colours, and that the description which accompanied it did not provide sufficient additional precision with regard to the systematic arrangement associating the colours in a predetermined and uniform way and precluding a number of different combinations of those colours.
Forms of order sought
12      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs, including the costs before the Board of Appeal.
13      EUIPO contends that the Court should:
–        dismiss the application, should the Court of Justice confirm that a representation consisting of a vertical or horizontal division of two equal blocks of colours is, as such, ‘abstract' and unsuitable to show, without a proper description, a systematic arrangement associating the colours in a predetermined and uniform way;
–        annul the contested decision, should the Court of Justice confirm that a representation consisting of a vertical or horizontal division of two equal blocks of colours is, as such, suitable to show a systematic arrangement associating the colours in a predetermined and uniform way, provided that the subject matter of protection is not broadened or otherwise altered by the accompanying description;
–        order each party to bear its own costs.
14      The intervener claims that the Court should:
–        dismiss the application;
–        order the applicant to pay the costs, including those incurred by the intervener.
Law
15      In support of its action, the applicant raises a single plea in law, alleging infringement of Article 4, read in conjunction with Article 7(1)(a), of Regulation No 40/94.
The regulation applicable rationae temporis
16      First of all, the applicant is of the view that the regulation applicable at the date of application for registration was Regulation No 40/94, and that it is therefore that regulation which must be applied in the present case.
17      EUIPO agrees that the regulation applicable to the present dispute is Regulation No 40/94, at least as regards the provisions which are not strictly procedural.
18      In view of the date on which the application for registration at issue was filed, namely 19 December 2008, which is decisive for the purpose of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Regulation No 40/94 (see, to that effect, order of 5 October 2004, Alcon v OHIM, C‑192/03 P, EU:C:2004:587, paragraphs 39 and 40, and judgment of 23 April 2020, Gugler France v Gugler and EUIPO, C‑736/18 P, EU:C:2020:308, paragraph 3 and the case-law cited). Moreover, since, in accordance with settled case-law, procedural rules are generally deemed to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain, C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited), the dispute is governed by the procedural provisions of Regulation 2017/1001, in force at the time the contested decision was adopted.
19      Consequently, in the present case, as regards the substantive rules, the references made by the Board of Appeal in the contested decision to Article 4 and Article 7(1)(a) of Regulation No 207/2009 must be understood as referring to Article 4 and Article 7(1)(a) of Regulation No 40/94, which are identical in content.
The single plea in law, alleging infringement of Article 4, read in conjunction with Article 7(1)(a), of Regulation No 40/94
20      The applicant disputes, in essence, the finding of the Board of Appeal finding that the graphic representation of the mark at issue was not sufficiently clear and precise. It argues that that representation contains, in reality, a systematic arrangement in which the colours are used in a predetermined and uniform manner. In particular, on the one hand, the two colours are depicted in a rectangular area and are defined by a colour code and, on the other, the graphic representation is accompanied by a very specific description clearly indicating the systematic arrangement of the colours. Thus, the contested mark displays all the characteristics required by the judgment of 24 June 2004, Heidelberger Bauchemie (C‑49/02, EU:C:2004:384). The applicant is of the opinion, moreover, that the judgment of 29 July 2019, Red Bull v EUIPO (C‑124/18 P, EU:C:2019:641) has no bearing on the present case, given that the graphic representation, taken together with the description, does not allow for different combinations of colours.
21      EUIPO is of the view that the decisive question in the present case is whether, irrespective of any possible description, a graphic representation consisting of two equal blocks of colours divided horizontally necessarily amounts to a designation of colours ‘in the abstract and without contours'. It is unclear whether the Court, in the judgment of 24 June 2004, Heidelberger Bauchemie (C‑49/02, EU:C:2004:384), considered that the representation of two colours in equal proportions and placed side-by-side amounts, as a matter of principle, to a claim to colours ‘in every conceivable form', or whether such a representation is unclear only if the description renders it imprecise.
22      On the one hand, if the representation were, already under Regulation No 40/94, deemed to make visible and concrete the systematic arrangement of colours, the combination of two colours placed side-by-side following a horizontal division has a specific shape or appearance and defines a permanent arrangement, which could be reproduced on products of different shapes. Following that premiss, the Board of Appeal erred in holding that the graphic representation of the mark at issue allowed for several different combinations of the two colours, since the description further defines the representation without adding anything to it or detracting anything from it and the representation is therefore sufficiently precise, even if the line dividing the housing of the chainsaw into an upper and a lower part is not straight. Furthermore, there is no flagrant contradiction between the representation of the sign and the way in which those colours are affixed to the product, given that it follows from the particular nature of colour marks that it may be necessary to adapt the delineation of the two colours to the actual context in which those colours are affixed.
23      On the other hand, if the representation of two equal horizontal blocks of colour cannot but amount, in itself, to an abstract juxtaposition of those colours, without being presumed to amount to a systematic arrangement, as the Board of Appeal held, the action should be dismissed. A description is always required to define that particular arrangement since it is not possible to know whether the line in the middle is a line that delimits the sign and participates in its shape or appearance in an immutable diagram. Even assuming that the proportion of each colour remains identical to the other colour, the description in the present case allows for different combinations and does not add any clarification capable of sufficiently defining the systematic arrangement of the colours applied for, to the exclusion of any other arrangement.
24      Furthermore, EUIPO takes the view that the judgment of 29 July 2019, Red Bull v EUIPO (C‑124/18 P, EU:C:2019:641), has no impact on the present case.
25      The intervener is of the view that the description of the mark at issue is not clear and that the assessment made by the Board of Appeal is manifestly relevant.
26      Article 4 of Regulation No 40/94 provides that an EU trade mark may consist of any signs capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.
27      In accordance with Article 7(1)(a) of Regulation No 40/94, signs which do not conform to the requirements of Article 4 of that regulation are not to be registered as EU trade marks.
28      The entry of the mark in a public register has the aim of making it accessible to the competent authorities and the public, particularly to economic operators. It is on the basis of that registration that the competent authorities must know with clarity and precision the nature of the signs of which a mark consists in order to be able to fulfil their obligations in relation to the prior examination of applications for registration and the publication and maintenance of an appropriate and precise register of trade marks. Economic operators, for their part, must be able to acquaint themselves, with clarity and precision, with registrations or applications for registration made by their actual or potential competitors and thus to obtain relevant information about the rights of third parties. If the users of that register are to be able to determine the precise nature of a mark on the basis of its registration, its graphic representation in the register must be self-contained, easily accessible and intelligible. This representation must also remove any element of subjectivity in the process of identification and perception of the sign (see, to that effect, judgment of 12 December 2002, Sieckmann, C‑273/00, EU:C:2002:748, paragraphs 49, 50, 52 and 54).
29      To that end, a graphic representation, within the meaning of Article 4 of Regulation No 40/94, must enable the sign to be represented visually, particularly by means of images, lines or characters, so that it can be precisely identified in such a way as to determine the exact subject matter of the protection afforded to the proprietor (judgment of 24 June 2004, Heidelberger Bauchemie, C‑49/02, EU:C:2004:384, paragraphs 25 and 27).
30      In that context, a sample of the colour in question accompanied by its designation by means of an internationally recognised identification code may constitute a graphic representation within the meaning of Article 4 of Regulation No 40/94, from the point of view of the precision and stability relating to the colours in question (see, to that effect, judgments of 6 May 2003, Libertel, C‑104/01, EU:C:2003:244, paragraph 37, and of 24 June 2004, Heidelberger Bauchemie, C‑49/02, EU:C:2004:384, paragraph 36).
31      In addition, a graphic representation consisting of two or more colours, designated in the abstract and without contours, must be systematically arranged by associating the colours concerned in a predetermined and uniform way. By contrast, the mere juxtaposition of two or more colours, without shape or contours, or a reference to two or more colours ‘in every conceivable form’, that is to say in a manner suggesting that the colours in question may take a number of different shapes, does not exhibit the qualities of precision and uniformity required by Article 4 of Regulation No 40/94. Such representations would allow numerous different combinations, which would not permit the consumer to perceive and recall a particular combination, thereby enabling him to repeat with certainty the experience of a purchase, any more than they would allow the competent authorities and economic operators to know the scope of the protection afforded to the proprietor of the trade mark (see, by analogy, judgment of 24 June 2004, Heidelberger Bauchemie, C‑49/02, EU:C:2004:384, paragraphs 33 to 35).
32      It is also apparent from the case-law that it follows from the nature of a mark consisting of a combination of colours per se, without contours or shape, that, in order for the precise subject matter of its protection to be clear and perceivable by consumers and by other economic operators and for it thus to fulfil its essential function of indicating origin while not conferring disproportionate competitive advantages, its graphic representation or the accompanying description must show the precise shades of the colours in question, the ratios and their spatial arrangement (judgment of 30 November 2017, Red Bull v EUIPO – Optimum Mark (Combination of the colours blue and silver), T‑101/15 and T‑102/15, EU:T:2017:852, paragraph 96, upheld on appeal).
33      Furthermore, under Rule 3(3) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1), the application may contain a description of the mark. The combination of a sample of a colour with a description in words may constitute a graphic representation within the meaning of Article 4 of Regulation No 40/94, provided that the description is clear, precise, self-contained, easily accessible, intelligible and objective (judgment of 6 May 2003, Libertel, C‑104/01, EU:C:2003:244, paragraph 36). Once a description is included in the application for registration, that mark must be examined in conjunction with the graphic representation (judgment of 30 November 2017, Combination of the colours blue and silver, T‑101/15 and T‑102/15, EU:T:2017:852, paragraph 79).
34      In the present case, as a preliminary point, it should be recalled that the Board of Appeal endorsed the definition of the relevant public adopted by the Cancellation Division, under which the goods for which the mark is registered, namely ‘chainsaws’ in Class 7, are intended for a specialist public, namely professional gardeners, qualified forestry workers and employees of companies or public bodies specialised in the field of construction or landscaping. Furthermore, in so far as the EU trade mark at issue is a colour mark featuring no legible word elements, it was necessary to take into account consumers throughout the European Union.
35      In addition, as it is clear from Article 1 of the contested decision, the mark at issue is defined by means of the representation reproduced in paragraph 2 above illustrating the combination of the colours orange (RAL 2010) and grey (RAL 7035), together with the following description: ‘The colour orange is applied to the top of the housing of the chainsaw and the colour grey is applied to the bottom of the housing of the chainsaw’ (see paragraph 3 above).
36      Although it is true that the sample of the two colours defined by means of two identification codes does not, as such, have contours giving them a particular shape, the description forming part of the trade mark application states that the mark takes the form of a part of a particular product, namely a chainsaw housing, and that the upper part of that housing is orange, while the lower part of that housing is grey.
37      Indeed, as stated by the Board of Appeal in paragraph 30 of the contested decision, the chainsaw housings are not all designed to be identical in shape. However, first, the differences between the housings in question as regards their external appearance consist of variations in design which do not preclude it remaining possible for the consumer to identify a single object. Second, the description of the mark at issue makes it clear that the combination of colours which is the subject of the protection in question does not take just any form of chainsaw housing, but rather the shape of a housing which is visibly divided into two parts, one upper and the other lower. That clarification, contained in the description of the mark at issue, places a greater limit on the shapes which the chainsaw housing may take.
38      Consequently, first, assessed in combination with the accompanying description, the graphic representation does not consist of the mere juxtaposition of two or more colours, without shape or contours, without a systematic arrangement. The colours forming the mark at issue do not take ‘all conceivable shapes’ in such a way as to imply that the mark in question lacks the precision and uniformity required by Article 4 of Regulation No 40/94.
39      Second, contrary to the findings of the Board of Appeal in paragraphs 34 and 36 of the contested decision, the fact that the application of the mark at issue to a chainsaw housing could result in the upper and lower parts of the housing being distinguished in exactly the same way as on the sample of colours forming part of the application is not decisive. The average consumer only rarely has the chance to make a direct comparison between different marks, but must place his or her trust in the imperfect picture of them that he or she has kept in mind. It follows that, irrespective of the precise shape of the housing, the information provided by the description accompanying the graphic representation enables the consumer to view a particular object, namely a chainsaw housing with two parts, the upper orange in colour and the lower grey in colour, and to recognise it at the time of purchase. That description therefore satisfies the conditions set out in paragraph 33 above.
40      In those circumstances, the mark at issue must be regarded as having a systematic arrangement associating the colours concerned in a predetermined and uniform way.
41      In the light of the description forming part of the registration, the mark at issue therefore enables the consumer to perceive and remember a particular combination which he or she might use in order to repeat, with certainty, a purchase experience, particularly as in the present case the public is specialist. Similarly, it enables the competent authorities and economic operators to know the scope of the protection afforded to the proprietor of the trade mark. It follows that the mark at issue satisfies the conditions of Article 4 of Regulation No 40/94.
42      Consequently, in finding in paragraph 40 of the contested decision that it was necessary to cancel the mark at issue pursuant to Article 7(1)(a) of Regulation No 40/94, read in conjunction with Article 51(1)(a) of that regulation, the Board of Appeal erred in its assessment, with the result that the applicant’s single plea in law must be upheld and the contested decision must be annulled.
Costs
43      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.
44      In the present case, since EUIPO and the intervener have been unsuccessful and the applicant has not, however, applied for costs against the intervener, EUIPO must be ordered to bear its own costs and to pay those incurred by the applicant, in accordance with the form of order sought by the applicant.
45      Furthermore, the intervener, which has been unsuccessful, must be ordered to bear its own costs.
On those grounds,
THE GENERAL COURT (Ninth Chamber)
hereby:
1.      Annuls the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 23 January 2018 (Case R 200/2017-2);
2.      Orders EUIPO to bear its own costs and to pay those incurred by Andreas Stihl AG & Co. KG;
3.      Orders Giro Travel Company SRL to bear its own costs.
Costeira
Gratsias
Berke
Delivered in open court in Luxembourg on 24 March 2021.
E. Coulon
S. Papasavvas
Registrar
President
*      Language of the case: English.