Colour case lacks traction

T-361/23 to T-364/23 (joined), Väderstad Holding AB v EUIPO, General Court, 11th September 2024

This article was first published by The Chartered Institute of Trade Marks Attorney

Key points

• The technical functionality of colours is a relevant criterion in assessing distinctiveness
   
• Applications for position marks should only be filed for the specific goods to which they are applied; filing for a broad list of goods may result in a refusal under Article 7(1)(a)
   
• The fact that there is an established practice in the relevant sector of using a combination of colours does not demonstrate how the relevant public would perceive the inherent qualities of the colours applied for, and therefore such practices cannot be used to show that the specific colours have a distinctive character

Marks

It is notoriously difficult to obtain protection for colour marks in the EU. This case is yet another example of where an applicant has failed to obtain protection, in this case for a combination of colours as a position mark, due to a lack of distinctive character.

Background

In September 2019, Väderstad Holding AB (Väderstad) applied to register the marks shown for goods in class 7 (“Agricultural, gardening and forestry machines and apparatus; Agricultural machines; Robotic mechanisms used in agriculture; Agricultural machine tools”) and class 12 (“Tractors for agricultural purposes; Trailers [vehicles]; Trailer hitches for vehicles”). The applications were for a colour position mark, described as follows: “The trade mark consists of the colours red ‘[PMS 186]’, black ‘[PMS Black]’ and yellow ‘[PMS 7549]’ applied to the vehicle as shown. The shape bordered by dotted lines is intended to show the position of the trade mark and does not form part of the trade mark, and no exclusive right is sought for the shape of the vehicle itself.”

The EUIPO refused the applications, as it considered that the marks were devoid of distinctive character (Article 7(1)(b) of the EU Trade Mark Regulation). Väderstad’s subsequent appeals were also dismissed. The Board of Appeal (BoA) took the view that, for all the applied-for goods, with the exception of “seed drills”, “agricultural implements for seedbed preparation, levelling and reconsolidation of soil” and “planters”, an objection had to be raised on the basis of Article 7(1)(a), as the positioning of the marks did not appear clearly on the goods. In respect of “seed drills”, “agricultural implements for seedbed preparation, levelling and reconsolidation of soil” and “planters”, the BoA found that the marks were devoid of distinctive character.

Appeal steps

On appeal to the General Court, Väderstad requested a limitation of the goods to “seed drills”, “agricultural implements for seedbed preparation, levelling and reconsolidation of soil” and “planters” in class 7 and indicated to the Court that it intended to restrict the scope of the appeals by relying solely on an infringement of Article 7(1)(b).

The Court confirmed that to allow the limitation of the applications would amount to changing the subject matter of the appeals, which is prohibited; the Court cannot annul or alter the BoA’s decision on grounds that come into existence subsequent to its adoption.

However, the Court noted that the limitation requests overlap with the division of goods carried out by the BoA, with the result that the subject matter of the dispute before the BoA is not altered. Therefore, the Court interpreted the limitation requests as meaning that the Applicant had in part withdrawn its appeals and was seeking an annulment of the contested decisions only insofar as they relate to the refusal of the limited goods on the basis of Article 7(1)(b).

Distinctiveness

The Court confirmed that the case law relating to colour marks and colour combination marks can be applied to colour position marks. Therefore, the BoA was fully entitled to emphasise the importance of a public interest in not unduly restricting the availability of colours for other operators. The Court also noted that while colours are capable of conveying certain associations of ideas, they possess little inherent capacity for communicating specific information. This is especially because they are commonly and widely used to advertise and market goods or services.

The Applicant had submitted an affidavit from the VDMA (an association for the German engineering industry), which stated that it was common and established practice for manufacturers of agricultural equipment in Europe to use specific colour patterns affixed to their agricultural equipment. The Court confirmed that neither the VDMA affidavit nor examples of use of colours on agricultural equipment that Väderstad had submitted show that the marks are capable of conveying precise information, specifically trade origin.

The Court confirmed the BoA’s findings that the combination of the colours red, yellow and black was not unusual in the agricultural sector and that these colours could also serve a safety or signalling function. The marks did not make it possible to identify the commercial origin of the goods at issue and therefore it was confirmed that they were indeed devoid of distinctive character.