Aktiebolaget Östgötatrafiken v Patent-och registreringsverket.
Date: 2020-10-08
As regards a trade mark designating a service, the referring court states that the Court, in paragraph 20 of its judgment of 10 July 2014, Apple (C‑421/13, EU:C:2014:2070), held that the layout of a retail store can also be capable of distinguishing the products or services of one undertaking from those of other undertakings when the depicted layout departs significantly from the norm or customs of the economic sector concerned.
As a preliminary point, it is appropriate to note that, with regard to a refusal to register a trade mark, the date on which the application for registration of that trade mark was made is determinative for the purposes of identifying the applicable substantive law (see, by analogy, judgment of 29 January 2020, Sky and Others, C‑371/18, EU:C:2020:45, paragraph 49).
In that regard, it follows from the settled case-law of the Court that the essential function of a trade mark is to ensure that the consumer or end user can identify the origin of the marked goods or services by enabling him or her, without any possibility of confusion, to distinguish the goods or services from others which have another origin (judgment of 12 June 2019, Hansson, C‑705/17, EU:C:2019:481, paragraph 31 and the case-law cited). That distinctive character, within the meaning of Article 3 of Directive 2008/95, must be assessed by reference to, first, the goods or services in respect of which registration is sought and, second, the perception of the relevant public, namely the average consumer of the category of goods or services in question, who is reasonably well informed and reasonably observant and circumspect (see, to that effect, judgments of 12 February 2004, Koninklijke KPN Nederland, C‑363/99, EU:C:2004:86, paragraph 34, and of 12 September 2019, Deutsches Patent- und Markenamt (#darferdas?), C‑541/18, EU:C:2019:725, paragraph 20).
Furthermore, in order to assess the distinctive character of a sign within the meaning of Article 3(1)(b) of Directive 2008/95, the competent authority must carry out an examination by reference to the actual situation, taking into account all the relevant circumstances of the case, including, where appropriate, the use made of that sign (see, to that effect, judgment of 27 March 2019, Hartwall, C‑578/17, EU:C:2019:261, paragraph 26 and the case-law cited).
In the present case, it will be for the referring court to determine, in the context of its overall analysis by reference to the actual situation in the case, whether the systematically arranged colour combinations, as shown in the applications for registration, are capable of conferring inherent distinctive character on the signs in question (see, by analogy, judgment of 27 March 2019, Hartwall, C‑578/17, EU:C:2019:261, paragraph 34). That condition must be regarded as satisfied if it emerges from that analysis that the colour combinations applied to the transport vehicles of the appellant in the main proceedings, enable the average consumer to distinguish, without any confusion, between the transport services provided by that undertaking and those provided by other undertakings.
As is clear from the settled case-law of the Court, the criterion for assessment of whether there is a significant departure from the norm or customs of the economic sector concerned applies where the sign consists of the shape of the product for which registration as a trade mark is sought, average consumers not being in the habit of making assumptions about the origin of products on the basis of their shape or the shape of their packaging in the absence of any graphic or word element (see, to that effect, judgments of 29 April 2004, Henkel v OHIM, C‑456/01 P and C‑457/01 P, EU:C:2004:258, paragraph 39; of 22 June 2006, Storck v OHIM, C‑25/05 P, EU:C:2006:422, paragraphs 27 to 29; and of 7 May 2015, Voss of Norway v OHIM, C‑445/13 P, EU:C:2015:303, paragraphs 90 and 91).
That criterion for assessment also applies where the sign consists of the representation of the layout of the physical space in which the services in respect of which registration as a trade mark is sought are provided (see, to that effect, judgment of 10 July 2014, Apple, C‑421/13, EU:C:2014:2070, paragraph 20).