JUDGMENT OF THE GENERAL COURT (Fourth Chamber)

12 November 2013 (*)

(Community trade mark – Invalidity proceedings – Absolute ground for refusal – Application for a Community trade mark consisting of blended shades of green – Distinctive character – Article 7(1)(b) of Regulation (EC) No 207/2009 – Bad faith – Article 52(1)(b) of Regulation No 207/2009 – Article 62 of Regulation No 207/2009)

In Case T‑245/12,

Gamesa Eólica, SL, established in Sarriguren (Spain), represented by E. Armijo Chávarri and A. Sanz Cerralbo, lawyers,

applicant,

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Folliard-Monguiral, acting as Agent,

defendant,

the other party to the proceedings before the Board of Appeal of OHIM being

Enercon GmbH, established in Aurich (Germany),

ACTION brought against the decision of the First Board of Appeal of OHIM of 1 March 2012 (Case R 260/2011-1), concerning invalidity proceedings between Gamesa Eólica SL and Enercon GmbH,

THE GENERAL COURT (Fourth Chamber),

composed of J. Schwarcz, President, M. van der Woude (Rapporteur) and D. Gratsias, Judges,

Registrar: J. Weychert, Administrator,

having regard to the application lodged at the Court Registry on 4 June 2012,

having regard to the response lodged at the Court Registry on 17 September 2012,

further to the hearing on 12 June 2013,

gives the following

Judgment

 Background to the dispute

1        On 21 August 2001 Enercon GmbH filed an application for registration of a Community trade mark (‘the contested mark’) with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), under Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).

2        The mark in respect of which registration was sought corresponds to the following sign:

3        The goods in respect of which registration was sought are in Class 7 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, as revised and amended, and correspond to the following description: ‘Wind energy converters, and parts therefor’.

4        The contested mark, reproduced in paragraph 2 above, is identified in the application form as a ‘colour mark’. A description of the colours applied for was provided by means of a colour code.

5        On 30 January 2003 the sign reproduced in paragraph 2 above was registered as a Community trade mark.

6        On 26 March 2009 the applicant, Gamesa Eólica SL, filed an application for a declaration of invalidity against the contested mark on the basis of Article 51(1)(a) and (b) of Regulation No 40/94 (now Article 52(1)(a) and (b) of Regulation No 207/2009).

7        By decision of 8 December 2010, the Cancellation Division granted the application for a declaration of invalidity on the basis of Article 7(1)(b) of Regulation No 207/2009. With regard, in particular, to the nature of the contested mark, the Cancellation Division considered, in essence, that that mark defined the way in which the registered colours may cover a wind turbine tower.

8        On 28 January 2011 Enercon filed a notice of appeal at OHIM against the Cancellation Division’s decision.

9        By decision of 1 March 2012 (‘the contested decision’), the Board of Appeal of OHIM annulled the decision of the Cancellation Division. First, the Board of Appeal held that the contested mark was composed of a figurative sign consisting of a two-dimensional shape made up of colours, and not a colour mark. Second, it considered that the contested mark was of sufficiently distinctive character since it represented neither a wind turbine tower nor a colour mark. Third, the Board of Appeal considered that the contested mark was not descriptive and that Article 7(1)(e)(ii) of Regulation No 207/2009 was not applicable because the contested mark was not a colour mark or a three-dimensional wind turbine. Fourth, the Board of Appeal held that there was no evidence that the contested mark, as re-categorised, had been applied for in bad faith since that mark cannot prevent competitors from complying with national administrative rules. In that regard, the Cancellation Division had based its arguments, in particular, on the fact that the colour green, or a blend of several shades of green, cannot be registered in respect of wind turbine towers, since a Community mark should not hinder the application of national legislation intended to limit the visual impact of wind turbines or, on the other hand, with regard to their upper part, to ensure that the wind turbines should be visible to aircraft.

 Forms of order sought

10      The applicant claims that the Court should:

–        annul the contested decision;

–        order OHIM to pay the costs.

11      OHIM contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

12      In support of its action, the applicant puts forward three pleas in law.

13      By its first plea in law, alleging infringement of Article 7(1)(b) of Regulation No 207/2009, the applicant claims that the Board of Appeal was wrong to re‑categorise the contested mark as a figurative mark. Consequently, the Board of Appeal’s assessment of the distinctive character of the contested mark was incorrect.

14      By its second plea in law, alleging infringement of Article 62 of Regulation No 207/2009, the applicant relies on the principle of functional continuity to claim that the Board of Appeal was not, in any event, entitled to re-categorise on its own initiative the nature of the contested mark.

15      By its third and final plea in law, alleging infringement of Article 52(1)(b) of Regulation No 207/2009, the applicant claims that the Board of Appeal should have found that Enercon acted in bad faith when filing its application for registration of the contested mark.

16      The Court is of the view that it is appropriate to examine the second plea in law first.

 The second plea in law, alleging infringement of Article 62 of Regulation No 207/2009

17      The applicant submits that the Board of Appeal infringed the principle of functional continuity laid down in Article 62 of Regulation No 207/2009, in so far as it did not base its decision on the matters of fact and law put forward by the parties in the course of the proceedings before the Cancellation Division. According to the applicant, the Board of Appeal based its decision on an incorrect assessment of the nature of the mark in question, which contradicts, moreover, the actual claims made by the proprietor of that mark in the course of the proceedings before the Cancellation Division.

18      In that regard, it must be noted that it is apparent from the case-law that there is continuity, in terms of their functions, between the different departments of OHIM, namely the examiner, the Opposition Division, the Administration of Trade Marks and Legal Divisions and the Cancellation Divisions, on the one hand, and the Boards of Appeal, on the other (see Case T‑252/04 Caviar Anzali v OHIM – Novomarket (Asetra) [2006] ECR II‑2115, paragraph 30 and the case-law cited).

19      It follows, specifically, from that continuity in terms of functions between the various departments of OHIM that, when the Boards of Appeal conduct the required review of decisions taken by the departments of OHIM at first instance, they must base their decision on all the matters of fact and of law which the parties concerned introduced either in the proceedings before the department which heard the application at first instance or in the appeal (Asetra, paragraph 18 above, paragraph 31). More generally, as the Court of Justice held in Case C‑29/05 P OHIM v Kaul [2007] ECR I‑2213, paragraph 57, it follows from Article 64(1) of Regulation No 207/2009, which states that, following the examination as to the allowability of the appeal, the Board of Appeal is to decide on it and, in doing so, may ‘exercise any power within the competence of the department which was responsible for the decision appealed’, that by virtue of the appeal brought before it, the Board of Appeal is called upon to carry out a new, full examination of the merits of the case before it, in terms of both law and fact (judgment of 28 April 2010 in Case T‑225/09 Claro v OHIM – Telefónica (Claro), not published in the ECR, paragraphs 30 and 31).

20      It follows that all the matters dealt with by the lower-level department of OHIM in the decision which is the subject of the appeal to the Board of Appeal form part of the legal and factual framework of the case before the Board of Appeal, which bases its decision on all those matters and has therefore jurisdiction to examine them. Since the issue of the nature and exact categorisation of the mark applied for must necessarily be examined in order to determine whether that mark has a distinctive character (see also paragraph 30 below) and was indeed examined by the Cancellation Division in its decision, the Board of Appeal had jurisdiction, irrespective of continuity in terms of functions between the various departments of OHIM, to re‑examine that issue in its decision and, where appropriate, reach a conclusion other than that reached by the Cancellation Division. It follows that, in so far as this plea is to be understood as calling into question the Board of Appeal’s jurisdiction in that regard, it is unfounded and must be rejected. On the other hand, in so far as this plea seeks to question whether the Board of Appeal’s findings in respect of that issue were correct, it is indissociable from the first plea in law and will be examined in the context of that plea below.

 The first plea in law, alleging infringement of Article 7(1)(b) of Regulation No 207/2009

21      The applicant has called into question the Board of Appeal’s finding that the contested mark is a figurative mark and not a colour mark, and further claims that the contested mark is devoid of distinctive character.

22      OHIM disputes all the applicant’s arguments.

23      According to Article 7(1)(b) of Regulation No 207/2009, ‘trade marks which are devoid of any distinctive character’ are not to be registered.

24      For a trade mark to possess distinctive character within the meaning of that provision, it must serve to identify the product or service in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish that product or service from those of other undertakings (Joined Cases C‑456/01 P and C‑457/01 P Henkel v OHIM [2004] ECR I‑5089, paragraph 34).

25      Moreover, it should be borne in mind that, in order to constitute a trade mark, colours or colour combinations must satisfy three conditions. First, they must be a sign. Second, that sign must be capable of graphic representation. Third, the sign must be capable of distinguishing the goods or services of one undertaking from those of other undertakings (Case C‑104/01 Libertel [2003] ECR I‑3793, paragraph 23; see also, to that effect, Case C‑49/02 Heidelberger Bauchemie [2004] ECR I‑6129, paragraph 22).

26      As regards the question whether colours or combinations of colours are capable of distinguishing the goods or services of one undertaking from those of other undertakings, it must be determined whether or not those colours or combinations of colours are capable of conveying specific information, particularly as regards the origin of a product or service (Heidelberger Bauchemie, paragraph 25 above, paragraph 37; Case T‑316/00 Viking-Umwelttechnik v OHIM (Juxtaposition of green and grey) [2002] ECR II‑3715, paragraph 23; and Case T‑234/01 Stihl v OHIM (Combination of orange and grey) [2003] ECR II‑2867, paragraph 26).

27      In that regard, it should 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 (Heidelberger Bauchemie, paragraph 25 above, paragraph 38).

28      Save in exceptional cases, colours do not initially have a distinctive character, but may be capable of acquiring such character as the result of the use made of them in relation to the goods or services covered by the Community trade mark application (Heidelberger Bauchemie, paragraph 25 above, paragraph 39). A colour per se may thus 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 207/2009. 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 judgment of 12 November 2008 in Case T‑400/07 GretagMacbeth v OHIM (Combination of 24 coloured squares), not published in the ECR, paragraph 36 and the case-law cited).

29      In addition, in assessing the potential distinctiveness of a given colour or combination of colours 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 (Libertel, paragraph 25 above, paragraph 60, and Heidelberger Bauchemie, paragraph 25 above, paragraph 42).

30      Lastly, it should be borne in mind that the distinctiveness of a mark must be assessed, first, in relation to the goods or services for which registration of the sign has been requested and, second, in relation to the perception which the relevant public has of it (see Combination of 24 coloured squares, paragraph 28 above, paragraph 36 and the case-law cited).

31      It is in the light of those considerations that the plea in law alleging infringement of Article 7(1)(b) of Regulation No 207/2009 should be examined.

32      As stated in paragraph 21 above, the applicant challenges both the Board of Appeal’s re-categorisation of the contested mark as a two‑dimensional figurative mark and the Board of Appeal’s assessment of the distinctive character of that mark. It is clear that, in the present case, the exact nature of the contested mark may influence significantly the assessment of its distinctive character. Accordingly, the Court will first examine the nature of the contested mark and then, as appropriate, its distinctive character.

33      With regard to the nature of the contested mark, the Board of Appeal first of all observed, in paragraph 14 of the contested decision, that the graphic representation, as shown in paragraph 2 above, was relevant to the assessment of the nature of the contested mark. The Board of Appeal stated that a description of the mark could only be complementary and could not, in any event, be a substitute for the representation thereof. Next, having described the sign in question, the Board of Appeal found, in paragraph 16 of the contested decision, that the applicant for the mark had registered a colour mark, indicating colour codes in order to clarify the colours used in the sign but not including a verbal description of the sign. The Board of Appeal concluded, in paragraph 17 of the contested decision, that the contested mark was not a colour mark per se, but rather a two‑dimensional figurative mark made up of colours in a specific frame, order and representation, namely in the form of a pin. According to the Board of Appeal, the Cancellation Division was therefore incorrect to find that the contested mark was actually a colour mark.

34      In that regard, it should be noted, first, that the only relevant information submitted by Enercon in its trade mark application consisted of the fact that the application was made in respect of a colour mark, the class and goods concerned, that is to say ‘wind energy converters, and parts therefor’, the sign reproduced in paragraph 2 above, and an indication of the sign’s colours by means of an international classification.

35      Second, it is clear, from both the application form and the acknowledgment of receipt of the application for registration sent by OHIM to the applicant, that the contested mark was registered as a colour mark. Enercon could have registered its mark as a figurative mark had it actually intended to do so. However, it is clear that the Board of Appeal attached no significance to the fact that the applicant for the mark knowingly registered a colour mark and not a figurative mark. Moreover, it is common ground that none of the parties has challenged the nature of the contested mark as a colour mark, at any stage in the proceedings.

36      By contrast, the question whether the contested mark was a colour mark per se, that is to say, in the present case, a combination of colours, not spatially defined, or rather a colour mark defining the way in which blended shades of colours would be applied on the goods concerned, was argued, in particular during the proceedings before the Board of Appeal.

37      Third, it must be pointed out that the arguments put forward by OHIM in its written submissions are essentially based on the fact that the trade mark application could have been structured differently or that the applicant for the mark was more explicit in other applications for registration of a Community trade mark.

38      First, while it is true that Enercon could have explained, for example, in its application for a Community trade mark, the way in which the combination of colours would be applied on wind turbine towers, as is permissible pursuant to Rule 3(3) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1), neither the case-law nor any provision of Regulation No 207/2009 requires it to do so. Next, the fact that Enercon gave more detail in another application for a Community trade mark is not capable of altering that finding. Moreover, OHIM confirmed at the hearing that Enercon’s recent trade mark application – which indeed contained more detail – had only limited relevance to the present case. Lastly, there is no rule obliging Enercon to represent the contours of the sign by dotted lines in order to indicate, where appropriate, that the contours of the sign are not protected, even if that would be the most commonly used indicator, a matter which has not, it may be added, been established during the proceedings. In that regard, OHIM confirmed at the hearing that the use of dotted lines was not obligatory and that harmonisation of practice in that regard was desirable.

39      In those circumstances, the Court finds that the Board of Appeal made an error of assessment by finding that the contested mark was not a colour mark but rather a two-dimensional figurative mark made up of colours.

40      The Board of Appeal’s decision was therefore based on a mistaken perception of the nature and characteristics of the mark at issue, which is sufficient to vitiate the entirety of its assessment, as set out in the contested decision. In those circumstances, the first plea of law must be upheld and the contested decision must therefore be annulled in its entirety.

 Costs

41      Under Article 87(2) of the Court’s Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.

42      Since OHIM has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by the applicant.

On those grounds,

THE GENERAL COURT (Fourth Chamber)

hereby:

1.      Annuls the decision of the First Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 1 March 2012 (Case R 260/2011-1); 

2.      Orders OHIM to bear its own costs and to pay those incurred by Gamesa Eólica, SL.

Schwarcz

Van der Woude

Gratsias

Delivered in open court in Luxembourg on 12 November 2013.

[Signatures]