Oberbank AG and Others v Deutscher Sparkassen- und Giroverband eV.
Date: 2014-06-19
31. If the referring court should find that the main proceedings relate, in Case C‑217/13, to Directive 89/104, it should be stated that the answers given to the questions referred in the present case are applicable to that earlier legislation. In relation to the equivalent provisions of Directive 89/104, the provisions of Directive 2008/95 that are relevant for the case before the referring court were not substantively amended, as regards their wording, context or purpose, when Directive 2008/95 was adopted and which, pursuant to recital 1 in the preamble to that directive, merely codified Directive 89/104.
36. It should be borne in mind at the outset that a colour mark per se is capable of constituting, under certain conditions, a trade mark within the meaning of Article 2 of Directive 2008/95 (see, to that effect, Case C‑104/01 Libertel  EU:C:2003:244, paragraphs 27 to 42, and Case C‑49/02 Heidelberger Bauchemie  EU:C:2004:384, paragraph 42).
38. According to settled case-law, just as distinctive character is one of the general conditions for registering a trade mark under Article 3(1)(b) of Directive 2008/95, distinctive character acquired through use means that the mark must serve to identify the product or service covered by that mark as originating from a particular undertaking, and thus to distinguish that product or service from goods of other undertakings (Joined Cases C‑108/97 and C‑109/97 Windsurfing Chiemsee  EU:C:1999:230, paragraph 46, and Case C‑299/99 Philips  EU:C:2002:377, paragraph 35).
39. It is also settled case-law that, whether inherent or acquired through use, the distinctive character of a mark must be assessed in relation, on the one hand, to the goods or services covered by that mark and, on the other, to the presumed expectations within the trade circles concerned, that is to say, an average consumer of the category of goods or services in question, who is reasonably well-informed and reasonably observant and circumspect (Case C‑363/99 K o ninklijke KPN Nederland  EU:C:2004:86, paragraph 34 and the case-law cited, and Case C‑353/03 Nestlé  EU:C:2005:432, paragraph 25).
40. As regards the question how to determine whether a mark has acquired a distinctive character through use, it is settled case-law that the competent authority for registering trade marks must carry out an examination by reference to the actual situation ( Libertel  EU:C:2003:244, paragraph 77, and Case C‑404/02 Nichols  EU:C:2004:538, paragraph 27) and make an overall assessment of the evidence that the mark has come to identify the goods or services concerned as originating from a particular undertaking ( Windsurfing Chiemsee  EU:C:1999:230, paragraph 49, and Nestlé  EU:C:2005:432, paragraph 31). Moreover, that evidence must relate to use of the mark as a trade mark, that is to say for the purposes of such identification by the relevant class of persons ( Philips  EU:C:2002:377, paragraph 64, and Nestlé  EU:C:2005:432, paragraphs 26 and 29).
41. In the context of that assessment, the following items may, inter alia, be taken into consideration: the market share held by the mark in question; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant class of persons who, because of the mark, identifies goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations ( Windsurfing Chiemsee  EU:C:1999:230, paragraph 51, and Nestlé  EU:C:2005:432, paragraph 31).
42. If, on the basis of those factors, the competent authority finds that the relevant class of persons, or at least a significant proportion thereof, identifies goods or services as originating from a particular undertaking because of the trade mark in question, it must in any event hold that the requirement laid down in Article 3(3) of Directive 2008/95 for the mark not to be excluded from registration or declared invalid is satisfied (see, to that effect, Windsurfing Chiemsee  EU:C:1999:230, paragraph 52, and Philips  EU:C:2002:377, paragraph 61).
43. It should also be stated that Union law does not preclude the competent authority, where it has particular difficulty in assessing the distinctive character acquired though use of the mark in respect of which registration or a declaration of invalidity is sought, from having recourse, under the conditions laid down by its own national law, to an opinion poll as guidance for its judgment (see, to that effect, Windsurfing Chiemsee  EU:C:1999:230, paragraph 53 and the case-law cited). If the competent authority finds it necessary to resort to such a survey, it must determine the percentage of consumers that would be sufficiently significant (see, by analogy, Case C‑487/07 Budějovický Budvar  EU:C:2009:521, paragraph 89).
44. However, the circumstances in which the requirement concerning the acquisition of a distinctive character through use, under Article 3(3) of Directive 2008/95, may be regarded as satisfied cannot be shown to exist solely by reference to general, abstract data such as predetermined percentages ( Windsurfing Chiemsee  EU:C:1999:230, paragraph 52, and Philips  EU:C:2002:377, paragraph 62).
45. In that regard, it must be observed that, in an overall assessment of the evidence that the mark has acquired a distinctive character through use, it may indeed appear, inter alia, that the perception of the relevant public is not necessarily the same for each of the categories of marks and that, accordingly, it could prove more difficult to establish the distinctive character, including distinctiveness acquired through use, of trade marks in certain categories than that of those in other categories (Case C‑218/01 Henkel  EU:C:2004:88, paragraph 52 and the case-law cited, and Nichols  EU:C:2004:538, paragraph 28).
46. However, Article 2 and Article 3(1)(b) and (3) of Directive 2008/95 make no distinction between different categories of trade marks. The criteria for assessing the distinctive character of contourless colour marks, such as the mark at issue in the main proceedings, including whether that mark has acquired a distinctive character following the use which has been made of it, are thus no different from those to be applied to other categories of trade mark (see, by analogy, Philips  EU:C:2002:377, paragraph 48, and Nichols  EU:C:2004:538, paragraphs 24 and 25).
47. The difficulties in establishing distinctive character which may be associated with certain categories of marks because of their nature — difficulties which it is legitimate to take into account — do not therefore justify laying down stricter criteria supplementing or derogating from application of the criterion of distinctiveness as interpreted in the case-law on other categories of marks (see, to that effect, Nichols  EU:C:2004:538, paragraph 26, and, by analogy, OHIM v BORCO-Marken-Import Matthiesen  EU:C:2010:508, paragraph 34).
52. In that regard, it should be borne in mind that it is not for the Court, in the context of the judicial cooperation established by Article 267 TFEU, to give a ruling on the interpretation of provisions of national law, or to decide whether the interpretation given by the national court of those provisions is correct. The Court must take account, under the division of jurisdiction between it and the national courts, of the factual and legislative context, as described in the order for reference, in which the questions put to it are set (Case C‑518/08 Fundación Gala-Salvador Dalí and VEGAP  EU:C:2010:191, paragraph 21 and the case-law cited, and Case C‑212/10 Logstor ROR Polska  EU:C:2011:404, paragraph 30).
60. It should nevertheless be borne in mind that the interpretation set out in paragraph 57 above does not exclude the possibility that account may be taken, by the competent authority, of evidence which, although subsequent to the date of filing the application for registration, enables the drawing of conclusions on the situation as it was on that date (see, to that effect, Case C‑488/06 P L & D  v OHIM  EU:C:2008:420, paragraph 71 and the case-law cited).
66. As to the substance, it is true that recital 6 in the preamble to Directive 2008/95 states, inter alia, that Member States should remain free to fix the procedural provisions concerning the invalidity of trade marks acquired by registration and determine, for example, the form of invalidity procedures. However, it cannot be inferred that the question of the burden of proof concerning distinctive character acquired through use in the context of invalidity proceedings pursuant to Article 3(1)(b), (c) or (d) of Directive 2008/95 constitutes such a procedural provision falling within the competence of Member States.
67. If the question of the burden of proof concerning distinctive character acquired by use which has been made of a mark in the context of invalidity proceedings were a matter for the national law of the Member States, the consequence for proprietors of trade marks could be that protection would vary according to the legal system concerned, with the result that the objective of ‘the same protection under the legal systems of all the Member States’ set out in recital 10 in the preamble to Directive 2008/95, where it is described as ‘fundamental’, would not be attained (see, by analogy, Case C‑405/03 Class International  EU:C:2005:616, paragraph 73 and the case-law cited, and Case C‑479/12 H. Gautzsch Großhandel  EU:C:2014:75, paragraph 40).
69. First, in the same way that distinctive character acquired following the use which is made of a mark is, in proceedings for registration, an exception to the grounds for refusal listed in Article 3(1)(b), (c) or (d) of Directive 2008/95 (see, to that effect, Case C‑108/05 Bovemij Verzekeringen  EU:C:2006:530, paragraph 21), distinctive character acquired following the use which is made of a mark is, in the context of invalidity proceedings, an exception to the grounds for invalidity listed in Article 3(1)(b), (c) or (d). Since it is an exception, the onus is on the party seeking to rely on it to justify its application.