CELEX: 62001TJ0234
Language: en
Date: 2003-07-09
Title: Judgment of the Court of First Instance (Fourth Chamber) of 9 July 2003. # Andreas Stihl AG & Co. KG v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM). # Community trade mark - Colours - Combination of orange and grey - Absolute ground for refusal - Distinctive character - Article 7(1)(b) of Regulation (EC) No 40/94. # Case T-234/01.

Case T-234/01 Andreas Stihl AG & Co. KGvOffice for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)
            «(Community trade mark – Colours – Combination of orange and grey – Absolute ground for refusal – Distinctive character – Article 7(1)(b) of Regulation (EC) No 40/94)»
            
               
                  Judgment of the Court of First Instance (Fourth Chamber), 9 July 2003  
                     
                
               
            
                   
               
               
            
            Summary of the Judgment
         
         
                  
                  Community trade mark – Definition and acquisition of the Community trade mark – Absolute grounds for refusal – Signs devoid of any distinctive character – Combination of shades of orange and grey(Council Regulation No 40/94, Art. 7(1)(b)) A trade mark consisting of a combination of two colours, namely an orange rectangle corresponding to colour reference Pantone
         164c above a grey rectangle corresponding to colour reference Pantone 428u, in respect of which  registration is sought for
         machines in Class 7 of the Nice Classification, is devoid of distinctive character in respect of the products referred to
         for the purposes of Article 7(1)(b) of Regulation No 40/94 on the Community trade mark. When viewed as a whole, such a sign,
         composed simply of a combination of a shade of orange and a shade of grey, is abstract and imprecise in relation to the products
         in question and does not show any systematic arrangement or definite separation of those colours.  Consequently, the relevant
         public will not see in that combination a sign that products thus coloured come from the same undertaking, but will rather
         see it merely as an aspect of the finish of the products.see paras 35-36, 42-43
      

      
      
      
      
      
      
      
      
      
      
      
      
      
      
      
            
            JUDGMENT OF THE COURT OF FIRST INSTANCE (Fourth Chamber)9 July 2003  (1)
         
         
               ((Community trade mark – Colours – Combination of orange and grey – Absolute ground for refusal – Distinctive character – Article 7(1)(b) of Regulation (EC) No 40/94))
               
             In Case T-234/01, 
            
            
            Andreas Stihl AG & Co. KG, established in Waiblingen (Germany), represented by  S. Völker and A. Klett, with an address for service in Luxembourg,
            
            
            applicant, 
            
            v
            Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by G. Schneider, acting as Agent,
            
            defendant, 
            
             ACTION for annulment of the decision of the First Board of Appeal of the Office for Harmonisation in the Internal Market (Trade
            Marks and Designs) of 24 July 2001 (Case R 477/2000-1) refusing registration of a combination of the colours orange and grey
            as a Community trade mark,
            
            
            THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (Fourth Chamber),
            
             composed of: V. Tiili, President, P. Mengozzi and M. Vilaras, Judges, 
            
             Registrar: B. Pastor, Deputy Registrar, 
            
            
            having regard to the application lodged at the Registry of the Court of First Instance on 28 September 2001,having regard to the response of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) lodged at the
               Registry of the Court of First Instance on 20 December 2001,further to the hearing on 19 March 2003,
            
         gives the following
         
         
         Judgment
            
               Background to the dispute
            
         
         1
            
          On 9 July 1996 the applicant filed an application under Council Regulation (EC) No 40/94 of 20 December 1993 on the Community
         trade mark (OJ 1994 L 11, p. 1), as amended, for a Community trade mark at the Office for Harmonisation in the Internal Market
         (Trade Marks and Designs) (OHIM). 
         
         
         2
            
          The trade mark in respect of which registration was sought is a combination of two colours  
         per se, comprising an orange rectangle corresponding to colour reference Pantone 164c above a grey rectangle corresponding to colour
         reference Pantone 428u. 
         
         
         3
            
          The goods in respect of which the registration was sought 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:  
            Motor saws, mechanical cutting-off machines with guide devices, mechanical cutting apparatus, motor sensors, mechanical and
            hand operated hedge clippers, mechanical boring apparatus including attachment apparatus, mechanical spraying apparatus, mechanical
            blowing apparatus (including apparatus which can be switched over to provide suction), electric lawn trimmers, earth cultivators,
            being attachment apparatus, high pressure cleaning apparatus and suction cleaning apparatus for household and industrial use,
            shearing apparatus, debranching apparatus, parts, replacement parts and accessories for the aforesaid apparatus. 
          Class 7:  
         Motor saws, mechanical cutting-off machines with guide devices, mechanical cutting apparatus, motor sensors, mechanical and
         hand operated hedge clippers, mechanical boring apparatus including attachment apparatus, mechanical spraying apparatus, mechanical
         blowing apparatus (including apparatus which can be switched over to provide suction), electric lawn trimmers, earth cultivators,
         being attachment apparatus, high pressure cleaning apparatus and suction cleaning apparatus for household and industrial use,
         shearing apparatus, debranching apparatus, parts, replacement parts and accessories for the aforesaid apparatus. 
         
         
         
         
         4
            
          By a decision of 7 April 2000, the examiner refused that application on the basis of Article 7(1)(b) of Regulation No 40/94,
         on the ground that neither of the two colours constituting the trade mark whose registration was sought was an unusual colour
         for the products mentioned in the list claimed and that neither the shades of colour chosen nor the combination of the colours
         could confer on the trade mark the requisite distinctive character.  On 8 May 2000 the applicant filed an appeal against the
         examiner's decision at OHIM under Article 59 of Regulation No 40/94. 
         
         
         5
            
          By a decision of 24 July 2001 (hereinafter  
         the contested decision), which was notified to the applicant on 3 August 2001, the First Board of Appeal rejected the appeal.  Essentially, the
         Board found that the relevant customers would not perceive the combination of colours as being, in itself, an indication of
         the commercial origin of the products in question. 
         Forms of order sought
         
         6
            
          The applicant claims that the Court should: 
         
         
         ─
             annul the contested decision;
          annul the contested decision;
         
         
         
         ─
             order OHIM to pay the costs.
          order OHIM to pay the costs.
         
         
         
         
         7
            
          OHIM contends that the Court should: 
         
         
         ─
             dismiss the action;
          dismiss the action;
         
         
         
         ─
             order the applicant to pay the costs.
          order the applicant to pay the costs.
         
         
         Law
         
         8
            
          In support of its action, the applicant relies on two pleas in law, alleging infringement of Article 7(1)(b) and of Article
         7(1)(c) of Regulation No 40/94.  The Court considers it appropriate to consider the first plea in law based on infringement
         of Article 7(1)(b) of that regulation. 
          Arguments of the parties
         
         
         9
            
          As a preliminary point, the applicant claims that colours, in the abstract, can be registered as trade marks.  With the modern
         conception of trade marks, the general public is more and more confronted with uncustomary signs, such as colours or sounds
         used in a deliberate systematic manner, and not for purely decorative or aesthetic purposes.  Such use enables the public
         to connect a colour or a combination of colours to the products of an undertaking.  Colours immediately attract the public's
         attention from a distance as a lure towards the undertaking's range of products, whereas other customary signs, such as word
         marks, enable the final identification of the product.  The applicant adds, in that regard, that the consumer is able to perceive
         different shades of colours. 
         
         
         10
            
          In addition, the applicant asserts that there is a real practical and economic need to protect such signs, which involve heavy
         investment.  Protection only in the form of a given graphic representation (circle, square, rectangle, etc.) is insufficient
         since the colours can assume various dimensions on the product itself and its packaging, and in advertising. 
         
         
         11
            
          In this case, the applicant submits, referring to its catalogue of products as evidence, that, in actual fact, the combination
         of colours for which registration was sought is made up of shades of colours, namely orange (Pantone 164c) and grey (Pantone
         428u), distributed in accordance with a definite pattern, the upper part of the casing being orange and the lower part light
         grey. 
         
         
         12
            
          It acknowledges that the distribution of the colours, just like the area covered by each of them, may vary from one product
         to another according to the nature and function of the products. 
         
         
         13
            
          Notwithstanding such possible differences, the applicant maintains that the generalised use of the combination creates an
         identifiable homogenous visual impression for its range of products.  Such systematic use, for which there are in-house instructions
         to the designers, does not therefore have a purely decorative role, but also enables the products to be identified. 
         
         
         14
            
          The applicant cites recent case-law, particularly of the German Bundesgerichtshof (Federal Court of Justice), recognising
         the ability of colours and (abstract) combinations of colours, except in special circumstances, to distinguish products or
         services. 
         
         
         15
            
          With regard to the ground of the contested decision stating that the combination is not unusual, the applicant claims that
         satisfaction of such a test cannot be required.  Indeed, according to it, if an undertaking has already used a combination
         of colours successfully for a certain time, it thereby loses its unusual character; it is the same if the undertaking uses
         the trade mark after its registration and immediately enjoys a certain success. 
         
         
         16
            
          In relation to the colour grey, the applicant submits that the colour claimed is a light grey, clearly different from the
         colour of the metallic parts of the designated products; it asserts that it is not important to know whether plastic is grey
         or not, because the consumer comes across plastic only in its coloured state and because it is readily apparent from the catalogue
         that the shade in issue does not create the impression that the parts so coloured are originally made of plastic. 
         
         
         17
            
          In relation to the colour orange, the applicant submits that it is not necessary to require an element of fantasy and that
         the fact that such colour is a basic or primary colour is irrelevant to its distinctive character. 
         
         
         18
            
          The applicant submits also that the unusual character of the combination is not relevant in determining the distinctive character
         of a combination of colours and that protection given to the specific combination of Pantone 428u and Pantone 164c does not
         preclude the possibility of other operators using other colours or combinations of colours, including those in neighbouring
         chromatic ranges.  Further, impediments to competitors can be avoided by restricting the protection conferred by the trade
         mark to one colour or to a combination of specific colours. 
         
         
         19
            
          For its part, OHIM admits that the frequent, systematic and targeted use of certain colours is intended to arouse, in the
         public mind, an association of those colours with the products or services of an undertaking.  That explains why the capacity
         of colours to perform the function of a trade mark results, in general, from distinctive character acquired by use. 
         
         
         20
            
          OHIM admits also, as has already been accepted by the Boards of Appeal (see, to that effect, Case R 7/97-3, orange), that
         a colour may, as such, be capable of protection as a Community trade mark. 
         
         
         21
            
          However, OHIM considers that, in order to avoid an absolute ground for refusal, the distinctive character of a given sign
         must exist prior to any use of the mark and before the commercial circles concerned are informed of, or get accustomed to,
         it.  A sign composed of usual shapes or colours which the public will perceive solely as decoration or as advertising material
         lacking any information as to the origin of the product does not fulfil such function. 
         
         
         22
            
          With regard to the reference to the case-law of the Bundesgerichtshof, OHIM states that that court has referred to Case R
         7/97-3, orange, cited above, which, in essence, allows acceptance of the distinctive character of a combination of colours
         only if findings of fact reveal a relationship between the combination and the products in question. 
         
         
         23
            
          With regard to the argument that the human eye is capable of perceiving numerous shades of colour, OHIM observes that, according
         to the Court's case-law, account should be taken of the fact that the average consumer only rarely has the chance to make
         a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept
         in his mind. 
         
         
         24
            
          In that regard, OHIM submits that the colours retained by the human memory are limited to certain imaginary or standard colours.
          According to OHIM, while the consumer may be able to distinguish light orange from dark orange linguistically, he cannot
         however, from memory, distinguish them on the Pantone scale. That indeed explains the interest of such a tool in order to
         compensate for the lack of objective memory of colours. 
         
         
         25
            
          In relation to the assessment of the combination as a whole, OHIM maintains that the shades of colours claimed are ordinary,
         that grey is achromatic and intrinsically unsuitable to attract the attention of the public, since it is also the natural
         colour of numerous metals and alloys before they are coloured, and that the shade of orange combined with the shade of grey
         is very widespread, in particular, in the tools sector for the purposes of drawing attention to the danger of certain parts.
         
          Findings of the Court
         
         
         26
            
          It must be observed, as a preliminary point, that colours or colour combinations  
         per se are capable of constituting Community trade marks in so far as they are capable of distinguishing the goods or services of
         one undertaking from those of another (Case T-316/00  
         Viking-Umwelttechnik v  
         OHIM (
         Juxtaposition of green and grey) [2002] ECR II-3715, paragraph 23). 
         
         
         27
            
          The fact that signs of a particular category may in principle constitute a trade mark does not however mean that all signs
         in that category necessarily possess distinctive character for the purposes of Article 7(1)(b) of Regulation No 40/94 for
         a particular product or service.  
         
         
         28
            
          Trade marks that are devoid of any distinctive character under Article 7(1)(b) of Regulation No 40/94 are regarded as incapable
         of performing the essential function of a trade mark, namely the identification of the origin of the goods or service and,
         as the Court of First Instance has already held, thus enabling the relevant public who acquired them to repeat the experience
         if it proves to be positive, or to avoid it if it proves to be negative, on the occasion of a subsequent acquisition of the
         goods and services in question (Case T-79/00  
         Rewe-Zentral v  
         OHIM (
         LITE) [2002] ECR II-705, paragraph 26). 
         
         
         29
            
          It must also be observed that Article 7(1)(b) of Regulation No 40/94 does not differentiate according to types of signs. 
         However, the perception of the relevant section of the public is not necessarily the same in the case of a sign composed of
         a colour or colour combination  
         per se and in that of a word or figurative mark composed of a sign that bears no relation to the appearance of the goods that it
         identifies.  While the public is accustomed to perceiving word or figurative marks as instantly identifying the commercial
         origin of the goods, the same is not necessarily true where the sign forms part of the look of the goods in respect of which
         registration of the sign is sought (judgment in  
         Juxtaposition of green and grey, cited above, paragraph 27).  
         
         
         30
            
          That being said, a sign's distinctiveness can only be assessed, firstly, by reference to the goods or services in respect
         of which registration is sought and, secondly, on the basis of the perception of that sign by the relevant public. 
         
         
         31
            
          In this case, the Court points out, first, that the list of products concerned, namely mechanical equipment, includes tools
         intended principally for commercial use, such as high-pressure cleaning equipment for industrial use, as well as machines
         intended for the end consumer, such as hand operated hedge clippers.  Therefore, it is appropriate to take as the relevant
         public consumers in general, as the Board of Appeal correctly decided at paragraph 18 of the contested decision.  Consequently,
         in any assessment of the distinctive character of the mark for which registration is sought, account must be taken of the
         presumed expectations of an average consumer who is reasonably well-informed and reasonably observant and circumspect.  However,
         account should be taken of the fact that the average consumer must place his trust in the imperfect picture of it that he
         has kept in his mind.  It should also be borne in mind that the average consumer's level of attention is likely to vary according
         to the category of goods or services in question (see, by analogy, Case C-342/97  
         Lloyd Schuhfabrik Meyer [1999] ECR I-3819, paragraph 26).  
         
         
         32
            
          Secondly, regarding the assessment of the distinctive character of the mark for which registration is sought, it is necessary,
         in the case of a complex trade mark, to consider it as a whole.  However, that does not preclude prior examination of each
         of the trade mark's individual features (see, to that effect,  
         Juxtaposition of green and grey, cited above, paragraphs 29 to 31).  
         
         
         33
            
          With regard to the colour orange, as OHIM correctly contends, that element could serve to draw attention to the dangerous
         parts of tools, which does not confer on it, from the outset, the function of indicating the commercial origin of the products
         in question.  Also, the specified shade, that is orange Pantone 164c, does not present a difference perceptible by the relevant
         public in relation to colours commonly used or capable of being used for the designated goods, particularly since, as was
         pointed out in paragraph 31 above, it retains an imperfect picture of it. 
         
         
         34
            
          With regard to the colour grey, the Board of Appeal held, at paragraph 15 of the contested decision, that that colour is associated
         with the materials, metallic or plastic, of which the goods in issue are comprised.  In that regard, even when the consumer
         can distinguish, by a more detailed examination, the grey of the base material from that resulting from intentional colouring,
         the colour grey will be perceived, also in its grey shade Pantone 428u, above all, as the result of a manufacturing process
         or as simply a coloured casing. 
         
         
         35
            
          As for the perception of the sign as a whole, the Court points out that the sign is composed of the simple combination of
         a shade of orange and a shade of grey, as shown in the application for registration.  In that regard, the Board of Appeal
         emphasised, correctly, at paragraph 17 of the contested decision, the absence of a definite separation of the colours in the
         sign claimed. 
         
         
         36
            
          On that point, it must be observed that the sign considered as a whole is abstract and imprecise in relation to the goods
         in question and does not show any systematic arrangement or definite separation of the said colours.  Therefore, the overall
         impression resulting from the combination of the colours in relation to the goods in question is simply colouring of items
         of casing rather than a systematic arrangement enabling, beyond a purely aesthetic function, the creation of a sign indicating
         the commercial origin of the goods (see, to that effect,  
         Juxtaposition of green and grey, cited above, paragraph 33). 
         
         
         37
            
          Furthermore, that combination of colours will not be perceived and recognised as a sign, because displaying the colours on
         the products in question in an unsystematic way may mean that there will be a variety of different formats, which will not
         enable consumers to take in and commit to memory a particular combination on which they could draw to make a repeat purchase
         directly and with certainty (see, to that effect,  
         Juxtaposition of green and grey, paragraph 34). 
         
         
         38
            
          That assessment cannot be brought into question by the applicant's argument that the distribution of the colours on the goods
         follows a precise format, namely orange for the upper part and grey for the lower part in accordance with the in-house instructions
         to the designers.  Indeed, in order to be noticed on the designated goods, and as represented on the registration application,
         that colour distribution scheme should always involve orange colouring of the upper part and grey colouring of the lower.
          But, even if regard is had only to the colouring of the casing parts and the possible difference in the proportions between
         the two colours is taken into account, the fact remains that the variety and irregularity of the shapes and sizes of the goods
         in question do not enable the colouring to reproduce, in a systematic way, the abovementioned colour distribution scheme.
         
         
         
         39
            
          That assessment is confirmed by inspection of the goods produced at the hearing. It is clear that the colouring of the goods
         mentioned in the application ─ according to the colour distribution scheme relied upon, in two more or less equal parts ─
         is impossible or not used when the casing or body parts are not of a shape which enables them to be coloured in accordance
         with that format.  It is therefore impossible for the relevant public to find on the goods a permanent sign associating the
         colours in a homogenous and predetermined manner. 
         
         
         40
            
          As regards the applicant's argument that the consumer consciously identifies products by means of colours which can attract
         his attention from a distance in order to guide him towards the range of products, it should be noted that by putting forward
         that argument the applicant necessarily acknowledges that a product's commercial origin is ultimately identified on the basis
         of other distinguishing features, such as a word mark. 
         
         
         41
            
          Furthermore, the distinctness of a sign cannot be derived solely from the  
         range effect whereby it is suggested to the consumer that several products have the same commercial origin because they are generally
         presented in a get-up in the same colours.  That analysis originates from a marketing concept which cannot have any bearing
         on the assessment of the sign's registrability (see, to that effect, Case T-358/00  
         DaimlerChrysler v  
         OHIM (
         TRUCKCARD) [2002] ECR II-1993, paragraph 47), because, in particular, a product marketed in isolation does not enable the indication
         of its commercial origin to be perceived in the colours, there then being no  
         range effect. 
         
         
         42
            
          Consequently, the relevant public will not see the combination of the colours orange and grey as a sign indicating that goods
         thus coloured come from the same undertaking but will rather see it merely as an aspect of the finish of the goods in question
         (see, to that effect,  
         Juxtaposition of green and grey, paragraph 37).  
         
         
         43
            
          Therefore, the trade mark whose registration is sought is devoid of distinctive character in respect of the categories of
         goods and services referred to. 
         
         
         44
            
          That conclusion cannot be gainsaid by the applicant's arguments that the test based on the unusual nature of the chromatic
         combination is inoperative on the ground that if an undertaking has been using that combination for a long time it ceases
         to be unusual.  Indeed, the unusual character of a colour or of a combination of colours, as a test for the assessment, in
         particular, of the distinctness of a chromatic sign, seeks to evaluate the aptitude of such colour or of such combination
         of colours to distinguish, in the eyes of the relevant public, the products or the services in question from those of another
         commercial source.  Moreover, in the same way as any other sign, a colour or a combination of colours which, in itself, does
         not, at the outset, have a distinctive character within the meaning of Article 7(1)(b) of Regulation No 40/94 may acquire
         it in relation to the products and the services claimed, as a result of its use in compliance with paragraph 3 of that article
         (see, by analogy, Joined Cases C-108/97 and C-109/97  
         Windsurfing Chiemsee [1999] ECR I-2779, paragraph 47).  Thus, the use which an undertaking which has applied for the registration of a trade mark
         makes of the colour or the combination of colours making up the mark, far from being a factor which excludes its distinctive
         character, may, in certain circumstances, particularly after a process of familiarisation of the relevant public, enable the
         chromatic sign in question to acquire the distinctness of which it was originally devoid. 
         
         
         45
            
          With regard to the German case-law cited by the applicant, it must be observed that the Community trade mark regime is an
         autonomous system (Case T-32/00  
         Messe München v  
         OHIM (
         electronica) [2000] ECR II-3829, paragraph 47).  In addition, it must be pointed out that in the decisions put forward by the applicant,
         the Bundesgerichtshof confined itself to recognising the possible distinctness of the colours in the light of the actual facts
         of each case. 
         
         
         46
            
          Therefore, the plea alleging infringement of Article 7(1)(b) of Regulation No 40/94 must be rejected. 
         
         
         47
            
          It is unnecessary to consider the plea alleging infringement of Article 7(1)(c) of Regulation No 40/94.  In accordance with
         consistent case-law, it is sufficient that one of the absolute grounds of refusal applies for the sign to be ineligible for
         registration as a Community trade mark (Case T-163/98  
         Procter & Gamble v  
         OHIM (
         BABY-DRY) [1999] ECR II-2383, paragraph 29, and Case T-19/99  
         DKV v  
         OHIM (
         COMPANYLINE) [2000] ECR II-1, paragraph 30). 
         
         
         48
            
          Consequently, the action must be dismissed. 
         
         Costs
         49
            
          Under Article 87(2) of the Rules of Procedure of the Court of First Instance, 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 OHIM's costs, in accordance with the form of order sought. 
         
         On those grounds, 
         
         
         
            
            THE COURT OF FIRST INSTANCE (Fourth Chamber)
         
         
          hereby:  
         
            
            1.
             Dismisses the action; 
            
            
            2.
             Orders the applicant to pay the costs.
            
            
                  Tiili 
               
               
                  Mengozzi
               
               
                  Vilaras 
               
            
                  
               
               
                  
               
               
                  
               
            
                  
               
               
                  
               
               
                  
               
            
                  
               
               
                  
               
               
                  
               
            
                  
               
               
                  
               
               
                  
               
            
            
            
            
            
            
            
            
         
         
          Delivered in open court in Luxembourg on 9 July 2003. 
         
         
         
         
                  H. Jung 
               
               
                  V. Tiili  
               
            
         
         
         
                  Registrar
               
               
                  President
               
            
         
            
         
      
          1 –
            
             Language of the case: German.