Heidelberger Bauchemie GmbH.
Date: 2004-06-24
16. In that regard, the Court noted at paragraphs 24 to 26 of its judgment in Case C‑104/01 Libertel [2003] ECR I-3793 that the Council of the European Union and the Commission made a joint declaration, entered in the minutes of the Council meeting on the adoption of the Directive, that they ‘consider that Article 2 does not exclude the possibility ... of registering as a trade mark a combination of colours or a single colour ... provided that they are capable of distinguishing the goods or services of one undertaking from those of other undertakings’ (OHIM OJ No 5/96, p. 607).
17. That declaration cannot be used to interpret a provision of secondary legislation where, as in this case, no reference is made to the content thereof in the wording of the provision in question and it therefore has no legal significance (Case C‑292/89 Antonissen [1991] ECR I-745, paragraph 18, and Case C-329/95 VAG Sverige [1997] ECR I-2675, paragraph 23). The Council and the Commission also explicitly recognised that limitation in the preamble to their declaration, which states: ‘since the following statements of the Council and the Commission are not part of the legal text they are without prejudice to the interpretation of that text by the Court of Justice of the European Communities’.
20. Since the Community is a party to the TRIPS Agreement, it is required to interpret its legislation on trade marks so far as possible in the light of the wording and purpose of that Agreement (see, to that effect, Case C‑53/96 Hermès [1998] ECR I-3603, paragraph 28).
22. To constitute a trade mark under Article 2 of the Directive, colours or combinations of colours must satisfy three conditions. First, they must be a sign. Secondly, that sign must be capable of being represented graphically. Thirdly, the sign must be capable of distinguishing the goods or services of one undertaking from those of other undertakings (see, to that effect, Libertel , paragraph 23).
23. As the Court has already held, colours are normally a simple property of things ( Libertel , paragraph 27). Even in the particular field of trade, colours and combinations of colours are generally used for their attractive or decorative powers, and do not convey any meaning. However, it is possible that colours or combinations of colours may be capable, when used in relation to a product or a service, of being a sign.
24. For the purposes of the application of Article 2 of the Directive, it is necessary to establish that in the context in which they are used colours or combinations of colours which it is sought to register in fact represent a sign. The purpose of that requirement is in particular to prevent the abuse of trademark law in order to obtain an unfair competitive advantage.
25. Moreover, it is clear from the Court’s case-law (Case C-273/00 Sieckmann [2002] ECR I-11737, paragraphs 46 to 55, and Libertel , paragraphs 28 and 29) that a graphic representation in terms of Article 2 of the Directive must enable the sign to be represented visually, particularly by means of images, lines or characters, so that it can be precisely identified.
28. The entry of the mark in a public register has the aim of making it accessible to the competent authorities and to the public, particularly to economic operators.
29. On the one hand, 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.
30. On the other hand, economic operators 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.
33. Accordingly, 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.
34. The mere juxtaposition of two or more colours, without shape or contours, or a reference to two or more colours ‘in every conceivable form’, as is the case with the trade mark which is the subject of the main proceedings, does not exhibit the qualities of precision and uniformity required by Article 2 of the Directive, as construed in paragraphs 25 to 32 of this judgment.
41. It should be added that, even if a combination of colours which it is sought to register as a trade mark satisfies the requirements for constituting a trade mark for the purposes of Article 2 of the Directive, it is still necessary for the competent authority for registering trade marks to decide whether the combination claimed satisfies the other requirements laid down, particularly in Article 3 of the Directive, for registration as a trade mark in relation to the goods or services of the undertaking which has applied for its registration. That examination must take account of all the relevant circumstances of the case, including any use which has been made of the sign in respect of which trade mark registration is sought ( Libertel , paragraph 76, and Case 363/99 Koninklijke KPN Nederland [2004] ECR I-0000, paragraph 37). That examination must also take account of the public interest in not unduly restricting the availability of colours for other traders who market goods or services of the same type as those in respect of which registration is sought ( Libertel , paragraphs 52 to 56).
42. In light of the above, the answer to the questions must be that colours or combinations of colours which are the subject of an application for registration as a trade mark, claimed in the abstract, without contours, and in shades which are named in words by reference to a colour sample and specified according to an internationally recognised colour classification system may constitute a trade mark for the purposes of Article 2 of the Directive where:
– it has been established that, in the context in which they are used, those colours or combinations of colours in fact represent a sign, and
– the application for registration includes a systematic arrangement associating the colours concerned in a predetermined and uniform way.
Even if a combination of colours satisfies the requirements for constituting a trade mark for the purposes of Article 2 of the Directive, it is still necessary for the competent authority for registering trade marks to decide whether the combination claimed fulfils the other requirements laid down, particularly in Article 3 of the Directive, for registration as a trade mark in relation to the goods or services of the undertaking which has applied for its registration. Such an examination must take account of all the relevant circumstances of the case, including any use which has been made of the sign in respect of which trade mark registration is sought. That examination must also take account of the public interest in not unduly restricting the availability of colours for other traders who market goods or services of the same type as those in respect of which registration is sought.