Refusal of application for a European Union trade mark

(Article 7 EUTMR and Rule 11(3) EUTMIR)

Alicante, 24/01/2017

MAGUIRE BOSS

24 East Street

St. Ives, Cambridge PE27 5PD

REINO UNIDO

Application No:	015344419
Your reference:	T7185-CT
Trade mark:
Mark type:	Colour per se
Applicant:	Checkers Industrial Products, LLC 620 Compton Street Broomfield, Colorado 80020 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 06/06/2016 pursuant to Article 7(1)(b) EUTMR because it found that the trade mark applied for is devoid of any distinctive character, for the reasons set out in the attached letter.

The applicant submitted its observations on 06/10/2016, which may be summarised as follows:

1. The applicant disagrees that ‘the combination of colours is not arranged in any particular format’ (25/09/2002, T‑316/00, Grün/Grau, EU:T:2002:225). The scope of protection sought in the present case is precisely delimited, as follows: ‘protection is claimed for the colours yellow (Pantone 102C) and orange (Pantone 173C) as shown in the representation of the colour mark applied for. The ration of the colours is approximately 50%-50%’. The objections raised by the Office are based on the assumption that the applicant claims exclusive rights to the colour combination yellow and orange per se, in no particular format.

2. None of the goods on the websites referred to by the Office in its notice of 06/06/2016 has the features of the trade mark applied for. A combination of yellow and orange may be used on those goods, but the mark for which registration is sought uses a specific and distinctive format of this colour combination. Furthermore, the evidence provided by the Office relates only to wires, but the objection was raised for all the goods for which registration is sought in Class 9.

3. The Office provided an internet extract showing the use of a yellow and orange colour scheme for pliers; however, these goods are not specified in the application in question.

4. The Office has erred in issuing a general refusal rather than considering the distinctiveness of the trade mark for all the various types of goods for which registration is sought. The Office did not provide reasons for its decision under Article 7(1)(b) EUTMR insofar as it relates to goods other than wire.

5. The applicant requested that it be allowed to amend the list of goods and services.

Pursuant to Article 75 EUTMR, it is up to the Office to take a decision based on reasons or evidence on which the applicant has had an opportunity to present its comments.

After giving due consideration to the applicant’s arguments, the Office has decided to maintain the objection.

Under Article 7(1)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ are not to be registered.

The marks referred to in Article 7(1)(b) EUTMR are, in particular, those that do not enable the relevant public ‘to repeat the experience of a purchase, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition of the goods or services concerned’ (27/02/2002, T‑79/00, Lite, EU:T:2002:42, § 26).

Article 7(1)(b) EUTMR does not draw any distinction between different types of sign. However,

[t]he 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.

(06/05/2003, C‑104/01, Libertel, EU:C:2003:244, § 65).

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.

It must therefore be acknowledged that there is, in European Union 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.

(06/05/2003, C‑104/01, Libertel, EU:C:2003:244, § 54 and 55).

‘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.’ (06/05/2003, C‑104/01, Libertel, EU:C:2003:244, § 66).

1. Regarding the applicant’s first argument, the mark for which registration is sought is a colour mark per se, as is the mark at issue in the judgment of 25/09/2002, T‑316/00, Grün/Grau, EU:T:2002:225. As the Court established, it is not clear from a mere mention of the colours (and their ratio) how they will be used on the goods in question. The mark could be used in a variety of different formats, which would not enable consumers to memorise one particular usage and therefore would not enable them to repeat the purchase.

2. As regards the applicant’s second argument, the Court has confirmed that:

where the Board of Appeal finds that the trade mark sought is devoid of intrinsic distinctive character, it may base its analysis on facts arising from practical experience generally acquired from the marketing of general consumer goods which are likely to be known by anyone and are in particular known by the consumers of those goods… In such a case, the Board of Appeal is not obliged to give examples of such practical experience.

(15/03/2006, T‑129/04, Plastikflaschenform, EU:T:2006:84, § 19).

Furthermore, the Office notes that ‘the distinctive character of a trade mark is determined on the basis of the fact that that mark can be immediately perceived by the relevant public as designating the commercial origin of the goods or services in question … The lack of prior use cannot automatically indicate such a perception.’ (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 88).

3. Regarding the applicant’s third argument, the Office does not contest that the internet extract showing use of a yellow and orange colour combination for pliers is irrelevant to the present case.

4. As regards the applicant’s fourth argument, the Office disagrees that it did not provide reasons for its refusal in relation to goods other than wires. The Office stated, in its notice of 06/06/2016, that the colour combination of yellow and orange is not likely to be noticed and remembered as an indication of commercial origin. In addition, the shades used are not perceptibly different enough from the shades of yellow and orange in common use in the sector to which the goods belong. Furthermore, the colours yellow and orange cannot be considered as unique or exceptional but as ordinary colours. Colours such as these are commonly used in the publicity and packaging of a wide range of consumer products and services. Therefore, there are clear indications that they could be used, in trade, for the presentation of the goods in question.

Furthermore, it is sufficient that a ground for refusal applies to a single homogenous category of goods and/or services. A homogenous category is a group of goods and/or services that have a sufficiently direct and specific link to each other (02/04/2009, T‑118/06, Ultimate fighting championship, EU:T:2009:100, § 28).

The Office considers that the goods for which registration is sought, except computer software, form a single homogeneous category and, therefore, it provided general reasoning for all the goods.

As stated in the Office’s communication of 06/06/2016, a combination of yellow and orange colours cannot be seen as unique and exceptional, and nor can the way in which the colours are combined in the mark.

For all the goods in question, it is common to decorate the goods themselves or their packaging with colours and colour combinations, which is why the colour combination applied for would be perceived not as an indication of their commercial origin but merely as a decorative feature.

As regards computer software, even though the product itself cannot have a colour, it is often provided on various kinds of hardware. It is common for the packaging of such a product to be decorated with colours. Therefore, the mark is non-distinctive for these goods also.

It is on the basis of that acquired experience that the Office submits that the relevant consumers would perceive the trade mark sought as ordinary and not as the trade mark of a particular proprietor. Since the applicant claims that the trade mark sought is distinctive, despite the Office’s analysis based on the abovementioned experience, it is up to the applicant to provide specific and substantiated information to show that the trade mark sought has distinctive character, either intrinsically or acquired through use, since it is much better placed to do so, given its thorough knowledge of the market (05/03/2003, T‑194/01, Soap device, EU:T:2003:53, § 48). However, this was not done.

5. Regarding the amendment to the list of goods and services that the applicant requested, the Office accepted the change to the application, as the amendment reduces the scope of the goods applied for. However, the revised list of goods and services does not alter the finding that the mark applied for is non-distinctive.

For the abovementioned reasons, and pursuant to Article 7(1)(b) EUTMR, the application for European Union trade mark No 15 344 419 is hereby rejected for all the goods claimed.

According to Article 59 EUTMR, you have a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

Klara BOUSKOVA