KWS Saat AG v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM).
Date: 2004-10-21
46. In this regard, the Court of First Instance erred in law in ruling, at paragraph 59 of the judgment under appeal, that the Board of Appeal had not infringed Article 73 of Regulation No 40/94.
47. It is, however, necessary to point out that, in paragraphs 14 to 16 of the contested decision, the Board of Appeal, adopting the decision of the examiner, took the view that the colour in question did not have a distinctive character for the goods in question.  A colour, in itself, does not in principle have a distinctive character, unless it has acquired such a character in consequence of use, and the colour orange is a very common colour for those goods.  Furthermore, the appellant’s competitors might also have an interest in using that colour.
48. Those grounds, on which KWS could have set out its position, were sufficient to justify dismissal of the application by the Board of Appeal.
49. The finding in paragraph 17 of the contested decision and resulting from the research of the Board of Appeal, to the effect that the colour in respect of which registration was sought was in no way unusual within the trade sector in question, merely confirms grounds which were already sufficient to justify that decision.  Likewise, the finding contained in paragraph 18 of the contested decision and illustrated by an extract from an internet site, stating that producers colour their seeds to indicate that they have been treated, is merely confirmatory in character.
50. It follows that the illegality which vitiates paragraphs 17 and 18 of the contested decision in regard to the second sentence of Article 73 of Regulation No 40/94 cannot result in the annulment of that decision.
51. There are accordingly no grounds for setting aside the judgment under appeal in that regard, notwithstanding the error of law vitiating paragraph 59 thereof (see, in this connection, Joined Cases C-74/00 P and C-75/00 P Falck and Acciaierie di Bolzano v Commission [2002] ECR I‑7869, paragraph 122; Case C-93/02 P Biret International v Council [2003] ECR I‑10497, paragraph 60; and Case C-94/02 P Biret et Cie v Council [2003] ECR I‑10565, paragraph 63).
58. The fact that the Court of First Instance did not infringe KWS’s right to put its case undermines entirely the argument that such an infringement had the result of depriving KWS of the option, at the time of the proceedings before the Court of First Instance, of restricting the list of the goods in respect of which registration of the mark was sought.  In any event, the Court of First Instance acted correctly in law in ruling, in paragraph 14 of the judgment under appeal, that the application made by KWS during the hearing before the Court of First Instance to have the list of goods restricted was inadmissible.  An application of that kind does not correspond to the rules laid down in Regulations Nos 40/94 and 2868/95 and would be liable to change the subject-matter of the proceedings, contrary to Article 135(4) of the Rules of Procedure of the Court of First Instance.
63. The first sentence of Article 73 of Regulation No 40/94 provides that ‘[d]ecisions of the Office shall state the reasons on which they are based’.
64. The obligation to state reasons, as thus laid down, has the same scope as that which derives from Article 253 EC.
65. It is settled case-law that the statement of reasons required by Article 253 EC must disclose in a clear and unequivocal manner the reasoning followed by the institution which adopted the measure in question in such a way as to enable the persons concerned to ascertain the reasons for the measure and to enable the competent Community Court to exercise its power of review.  It is not necessary for the reasoning to go into all the relevant facts and points of law, since the question whether the statement of reasons meets the requirements of Article 253 EC must be assessed with regard not only to its wording but also to its context and to all the legal rules governing the matter in question (see, in this connection, Case C-367/95 P Commission v Sytraval and Brink’s France [1998] ECR I‑1719, paragraph 63, and Case C-265/97 P VBA v Florimex and Others [2000] ECR I‑2061, paragraph 93).
78. So far as concerns the criteria governing appraisal of the distinctive character of the different categories of trade marks, the Court of First Instance correctly stated, in paragraph 29 of the judgment under appeal, that Article 7(1)(b) of Regulation No 40/94 does not draw any distinction between different types of sign.  However, the Court of First Instance also correctly pointed out that the relevant public’s perception is not necessarily the same in the case of a sign composed of a colour per se as it is in the case of a word or figurative mark, where the sign is independent of the appearance of the goods which it identifies.  While the public is accustomed to perceiving word or figurative marks immediately as signs identifying the commercial origin of the goods, the same does not necessarily hold true where the sign forms part of the external appearance of the goods (see, with regard to the identical provisions of Article 3(1)(b) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1), Case C-104/01 Libertel [2003] ECR I‑3793, paragraph 65).
79. In that context, a colour per se may acquire, for the goods or services in respect of which registration is sought, a distinctive character in consequence of the use which has been made of it, by virtue of Article 7(3) of Regulation No 40/94.  By contrast, in the case of a colour per se, distinctiveness without any prior use is inconceivable save in exceptional circumstances, and particularly where the number of goods or services for which the mark is claimed is very restricted and the relevant market very specific (see, in regard to the identical provisions of Article 3(1)(b) and (3) of Directive 89/104, Libertel, cited above, paragraphs 66 and 67).