Proceedings brought by Oy Hartwall Ab.
Date: 2019-03-27
21


At the outset, it should be borne in mind that Directive 2008/95 does not establish categories of marks and Article 2 and Article 3(1)(b) and (3) of the directive make no distinction between different categories of trade marks (see, to that effect, judgment of 19 June 2014, Oberbank and Others, C‑217/13 and C‑218/13, EU:C:2014:2012, paragraph 46).
26


As for the effect of the classification of a sign as a ‘colour mark’ or ‘figurative mark’ on the assessment of distinctive character, it must be held that when a competent authority examines a trade mark application, it must, in order to determine whether the sign in respect of which protection is sought under trade mark law has distinctive character within the meaning of Article 3(1)(b) of Directive 2008/95, carry out an examination by reference to the actual situation, taking account of all the circumstances of the case and in particular any use which has been made of the sign (see, to that effect, judgments of 6 May 2003, Libertel, C‑104/01, EU:C:2003:244, paragraph 76; of 12 February 2004, Koninklijke KPN Nederland, C‑363/99, EU:C:2004:86, paragraphs 31 to 35; and of 24 June 2004, Heidelberger Bauchemie, C‑49/02, EU:C:2004:384, paragraph 41).
27


The examination of the distinctive character of a mark cannot therefore be carried out in the abstract (judgment of 12 February 2004, Koninklijke KPN Nederland, C‑363/99, EU:C:2004:86, paragraph 31).
28


Moreover, the Court has held that the criteria of assessment of the distinctive character of colour marks are the same as those applicable to the other categories of marks. The potential difficulties in establishing the distinctive character of certain categories of marks because of their nature — difficulties which it is legitimate to take into account — do not justify laying down stricter criteria supplementing or derogating from application of the criterion of distinctive character as interpreted by the Court with regard to other categories of marks (see, to that effect, judgment of 19 June 2014, Oberbank and Others, C‑217/13 and C‑218/13, EU:C:2014:2012, paragraphs 46 and 47).
29


However, although the criteria relating to the assessment of distinctive character are the same for colour marks and figurative marks, it is apparent from the Court’s case-law that the perception of the relevant public is not necessarily the same in the case of a sign consisting of a colour per se as it is in the case of a word or figurative mark. While the public is accustomed to perceiving word or figurative marks instantly as signs identifying the commercial origin of the goods, a colour per se is not normally inherently capable of distinguishing the goods of a particular undertaking (see, to that effect, judgment of 6 May 2003, Libertel, C‑104/01, EU:C:2003:244, paragraph 65).
30


Thus, the Court has held that, in the case of a colour per se, distinctiveness without any prior use is inconceivable save in exceptional circumstances and, even if a colour per se does not initially have any distinctive character, it may acquire such character in relation to the goods or services in respect of which registration of the mark is sought following the use made of it (judgment of 6 May 2003, Libertel, C‑104/01, EU:C:2003:244, paragraphs 66 and 67).
31


Moreover, in assessing the potential distinctive character of a colour per se or a colour combination as a trade mark, regard must be had to the general interest in not unduly restricting the availability of colours for the other traders who offer for sale goods or services of the same type as those in respect of which registration is sought (judgments of 6 May 2003, Libertel, C‑104/01, EU:C:2003:244, paragraph 60, and of 24 June 2004, Heidelberger Bauchemie, C‑49/02, EU:C:2004:384, paragraph 41).
33


Moreover, when the sign registration of which as a mark is sought consists of a colour combination designated in the abstract and without contours, it is the Court’s settled case-law that the graphic representation of those colours must be systematically arranged by associating them in a predetermined and uniform way (see, to that effect, judgment of 24 June 2004, Heidelberger Bauchemie, C‑49/02, EU:C:2004:384, paragraph 33).
34


Thus, in the overall analysis of distinctive character by reference to the actual situation, it is necessary to examine whether and to what extent the systematically arranged colour combination is capable of conferring inherent distinctive character on the sign in question.
38


In that regard, it should be noted that, according to the Court’s settled case-law, a sign may be registered as a mark only if the applicant provides a graphic representation in accordance with the requirement in Article 2 of Directive 2008/95, to the effect that the subject matter and scope of the protection sought are clearly and precisely determined (see, to that effect, judgment of 6 May 2003, Libertel, C‑104/01, EU:C:2003:244, paragraph 29 and the case-law cited).
39


The verbal description of the sign serves to clarify the subject matter and scope of the protection sought under trade mark law (see, to that effect, judgment of 27 November 2003, Shield Mark, C‑283/01, EU:C:2003:641, paragraph 59, and, as an example, judgment of 24 June 2004, Heidelberger Bauchemie, C‑49/02, EU:C:2004:384, paragraph 34).
40


As the Advocate General set out, in essence, in points 60 to 63 of his Opinion, when the trade mark application contains an inconsistency between the sign, protection in respect of which is sought in the form of a drawing, and the classification given to the mark by the applicant, the consequence of which is that it is impossible to determine exactly the subject matter and scope of the protection sought under trade mark law, the competent authority must refuse registration of the mark on account of the lack of clarity and precision of the trade mark application.