Libertel Groep BV v Benelux-Merkenbureau.
Date: 2003-05-06
22.  In order to consider those questions it is necessary as a preliminary matter to determine whether a colour   per se   is capable of constituting a trade mark for the purposes of Article 2 of the Directive.
23.  To that end, the colour must satisfy three conditions. First, it must be a sign. Secondly, that sign must be capable of graphic representation. Thirdly, the sign must be capable of distinguishing the goods or services of one undertaking from those of other undertakings.
24.  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).
25.  However, 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 (Cases C-292/89   Antonissen   [1991] ECR I-745, paragraph 18, and 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 as follows:   "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"  .
26.  Accordingly, it is for the Court to determine whether Article 2 of the Directive is to be interpreted as meaning that a colour   per se   is capable of constituting a trade mark.
27.  In that regard it must be pointed out that a colour   per se   cannot be presumed to constitute a sign. Normally a colour is a simple property of things. Yet it may constitute a sign. That depends on the context in which the colour is used. None the less, a colour   per se   is capable, in relation to a product or service, of constituting a sign.
28.  Furthermore, as the Court has held, a graphic representation within the meaning 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 (Case C-273/00   Sieckmann   [2002] ECR I-11737, paragraph 46).
29.  In order to fulfil its function, the graphic representation within the meaning of Article 2 of the Directive must be clear, precise, self-contained, easily accessible, intelligible, durable and objective (Sieckmann  , paragraphs 47 to 55).
30.  In this case the query referred to the Court relates to an application to register a colour   per se  , represented by a sample of the colour on a flat surface, a description in words of the colour and/or an internationally recognised colour identification code.
31.  A mere sample of a colour does not, however, satisfy the requirements set out in paragraphs 28 and 29 of this judgment.
32.  In particular a sample of a colour may deteriorate with time. There may be certain media on which it is possible to reproduce a colour in permanent form. However with other media, including paper, the exact shade of the colour cannot be protected from the effects of the passage of time. In these cases, the filing of a sample of a colour does not possess the durability required by Article 2 of the Directive (see   Sieckmann  , paragraph 53).
33.  It follows that filing a sample of a colour does not   per se   constitute a graphic representation within the meaning of Article 2 of the Directive.
34.  On the other hand, a verbal description of a colour, in so far as it is composed of words which themselves are made up of letters, does constitute a graphic representation of the colour (see   Sieckmann  , paragraph 70).
35.  A description in words of the colour will not necessarily satisfy the conditions set out in paragraphs 28 and 29 of this judgment in every instance. That is a question which must be evaluated in the light of the circumstances of each individual case.
36.  A sample of a colour, combined with a description in words of that colour, may therefore constitute a graphic representation within the meaning of Article 2 of the Directive, provided that the description isclear, precise, self-contained, easily accessible, intelligible, and objective.
37.  For the same reasons as those set out at paragraph 34 of this judgment, the designation of a colour using an internationally recognised identification code may be considered to constitute a graphic representation. Such codes are deemed to be precise and stable.
38.  Where a sample of a colour, together with a description in words, does not satisfy the conditions laid down in Article 2 of the Directive in order for it to constitute a graphic representation because,   inter alia  , it lacks precision or durability, that deficiency may, depending on the facts, be remedied by adding a colour designation from an internationally recognised identification code.
39.  As to the question whether a colour   per se   is capable of distinguishing the goods or services of one undertaking from those of other undertakings, within the meaning of Article 2 of the Directive, it is necessary to determine whether or not colours   per se   are capable of conveying specific information, in particular as to the origin of a product or service.
40.  In that connection, it must be borne in mind that, whilst colours are capable of conveying certain associations of ideas, and of arousing feelings, they possess little inherent capacity for communicating specific information, especially since they are commonly and widely used, because of their appeal, in order to advertise and market goods or services, without any specific message.
41.  However, that factual finding would not justify the conclusion that colours   per se   cannot, as a matter of principle, be considered to be capable of distinguishing the goods or services of one undertaking from those of other undertakings. The possibility that a colour   per se   may in some circumstances serve as a badge of origin of the goods or services of an undertaking cannot be ruled out. It must therefore be accepted that colours   per se   may be capable of distinguishing the goods or services of one undertaking from those of other undertakings, within the meaning of Article 2 of the Directive.
42.  It follows from the foregoing that, where the conditions described above apply, a colour   per se   is capable of constituting a trade mark within the meaning of Article 2 of the Directive.
46.  In the absence of any indication to the contrary in the order for reference, it must be considered that the case in the main proceedings relates to goods and services intended for all consumers. Accordingly, the relevant public in this case must be deemed to be composed of the average consumer, reasonably well-informed and reasonably observant and circumspect (see Case C-342/97   Lloyd Schuhfabrik Meyer   [1999] ECR I-3819, paragraph 26).
48.  It is settled case-law that trade mark rights constitute an essential element in the system of undistorted competition which the EC Treaty seeks to establish and maintain (see Case C-10/89   HAG II   [1990] ECR I-3711, paragraph 13, and Case C-63/97   BMW   [1999] ECR I-905, paragraph 62). The rights and powers that trade marks confer on their proprietors must be considered in the light of that objective.
51.  The various grounds for refusing registration in Article 3 of the Directive must therefore be interpreted in the light of the public interest underlying each of them (Case C-299/99   Philips   [2002] ECR I-5475, paragraph 77).
52.  As regards Article 3(1)(c) of the Directive, the Court has recognised that this provision pursues an aim that is in the public interest, which requires that the signs and indications descriptive of the categories of goods or services for which registration is sought may be freely used by all (see Joined Cases C-108/97 and C-109/97   Windsurfing Chiemsee   [1999] ECR I-2779, paragraph 25, and Joined Cases C-53/01 to C-55/01   Linde and Others   [2003] ECR I-3161, paragraph 73).
53.  Similarly, with regard to Article 3(1)(e) of the Directive, the Court has held that this provision pursues an aim which is in the public interest, namely that a shape whose essential characteristics perform a technical function and were chosen to fulfil that function may be freely used by all (Philips  , paragraph 80, and   Linde  , paragraph 72).
54.  As regards the registration as trade marks of colours   per se  , not spatially delimited, the fact that the number of colours actually available is limited means that a small number of trade mark registrations for certain services or goods could exhaust the entire range of the colours available. Such an extensive monopoly would be incompatible with a system of undistorted competition, in particular because it could have the effect of creating an unjustified competitive advantage for a single trader. Nor would it be conducive to economic development or the fostering of the spirit of enterprise for established traders to be able to register the entire range of colours that is in fact available for their own benefit, to the detriment of new traders.
55.  It must therefore be acknowledged that there is, in Community trade-mark law, a public interest in not unduly restricting the availability of colours for the other operators who offer for sale goods or services of the same type as those in respect of which registration is sought.
56.  The greater the number of the goods or services for which the trade mark is sought to be registered, the more excessive the exclusive right which it may confer is likely to be, and, for that very reason, the more likely is that right to come into conflict with the maintenance of a system of undistorted competition, and with the public interest in not unduly restricting the availability of colours for the other traders who market goods or services of the same type as those in respect of which registration is sought.
58.  Article 6 of the Directive concerns the limits on the effects of a trade mark once it has been registered. The Commission's argument amounts to proposing that there should be a minimal review of the grounds for refusal in Article 3 of the Directive at the time when the application for registration is considered, on the basis that the risk that operators might appropriate certain signs which ought to remain available is neutralised by the limits which Article 6 imposes at the stage when advantage is taken of the effects of the registered mark. That approach is, essentially, tantamount to withdrawing the assessment of the grounds of refusal in Article 3 of the Directive from the competent authority at the time when the mark is registered, in order to transfer it to the courts with responsibility for ensuring that the rights conferred by the trade mark can actually be exercised.
59.  That approach is incompatible with the scheme of the Directive, which is founded on review prior to registration, not an   a posteriori   review.  There is nothing in the Directive to suggest that Article 6 leads to such a conclusion.  On the contrary, the large number and detailed nature of the obstacles to registration set out in Articles 2 and 3 of the Directive, and the wide range of remedies available in the event of refusal, indicate that the examination carried out at the time of the application for registration must not be a minimal one.  It must be a stringent and full examination, in order to prevent trade marks from being improperly registered.  As the Court has already held, for reasons of legal certainty and good administration, it is necessary to ensure that trade marks whose use could successfully be challenged before the courts are not registered (Case C-39/97Canon   [1998] ECR I-5507, paragraph 21).
60.  Accordingly, the reply to the third question referred must be that, in assessing the potential distinctiveness of a given colour 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.
The first question and Question 2(a)
62.  It is settled case-law that the essential function of a trade mark is to guarantee the identity of the origin of the marked goods or service to the consumer or end user by enabling him, without any possibility of confusion, to distinguish the goods or services from others which have another origin (see   Canon  , paragraph 28, and Case C-517/99   Merz  & Krell   [2001] ECR I-6959, paragraph 22).  A trade mark must distinguish the goods or services concerned as originating from a particular undertaking.  In that connection, regard must be had both to the ordinary use of trade marks as a badge of origin in the sectors concerned and to the perception of the relevant public.
64.  Account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind (see, in different contexts,   Lloyd Schuhfabrik Meyer  , paragraph 26, and Case C-291/00   LTJ Diffusion   [2003] ECR I-2799, paragraph 52).
65.  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 consisting of a sign that bears no relation to the appearance of the goods it denotes. While the public is accustomed to perceiving word or figurative marks instantly as signs identifying the commercial origin of the goods, the same is not necessarily true where the sign forms part of the look of the goods in respect of which registration of the sign as a trade mark is sought.  Consumers are not in the habit of making assumptions about the origin of goods based on their colour or the colour of their packaging, in the absence of any graphic or word element, because as a rule a colour   per se   is not, in current commercial practice, used as a means of identification.  A colour   per se   is not normally inherently capable of distinguishing the goods of a particular undertaking.
66.  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.
67.  However, even if a colour   per se   does not initially have any distinctive character within the meaning of Article 3(1)(b) of the Directive, it may acquire such character in relation to the goods or services claimed following the use made of it, pursuant to Article 3(3) of the Directive.  That distinctive character may be acquired,   inter alia  , after the normal process of familiarising the relevant public has taken place.  In such cases, the competent authority must make an overall assessment of the evidence that the mark has come to identify the product concerned as originating from a particular undertaking, and thus to distinguish that product from goods of other undertakings (Windsurfing Chiemsee  , cited above, paragraph 49).
75.  Second, registration of a sign as a trade mark is always applied for in respect of the goods or services mentioned in the application for registration.  Accordingly, a trade mark's distinctiveness must be assessed by reference, first, to the goods or services in respect of which registration is sought, and, second, by reference to the relevant public's perception of that mark.
76.  Since the competent authority for registering trade marks has to satisfy itself that the sign is not devoid of distinctive character for the goods or services of the undertaking seeking its registration as a trade mark, it may not carry out an examination in the abstract but must of necessity undertake its examination by reference to the actual situation.  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.
77.  The reply to the fourth question referred must therefore be that, in assessing whether a trade mark has distinctive character within the meaning of Article 3(1)(b) and Article 3(3) of the Directive, the competent authority for registering trade marks must 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 mark.