May 11, 2021
Andreas Stihl AG & Co. KG is the owner of the EU trade mark shown below for the combination of colours orange (RAL 2010) and grey (RAL 7035), which was registered in August 2011 in Class 7 for “Chainsaws”:
The mark was registered with the following description: “The colour orange is applied to the top of the housing of the chain saw and the colour grey is applied to the bottom of the housing of the chain saw”.
In June 2015, Giro Travel Company srl, applied to EUIPO for a declaration of invalidity of the mark under Articles 7(1)(a), (b) and (d) of the Trade Mark Regulation (2017/1001/EU).
The Cancellation Division rejected the application on the basis that the trade mark was valid under Article 7(1)(a) of the Trade Mark Regulation (207/2009/EC) as it complied with Article 4. The Cancellation Division found that the graphic representation and the verbal description of the sign made it possible to identify a systematic arrangement in which the colours were used in a predetermined and uniform way.
The Second Board of Appeal upheld Giro Travel’s appeal finding that the description of the mark was not sufficiently clear, precise, self-contained, easily accessible, intelligible or objective. Further, it said that as there were numerous different shapes of chainsaws on the market, it was not clear what the scope of protection of the mark actually was. It also found that the graphic representation of the mark, which was without shape or contours, allowed for several different combinations of the two colours and that the description did not provide sufficient additional precision as to their arrangement, such as to preclude a number of different combinations of those colours.
Andreas Stihl appealed to the General Court, disputing the BoA’s decision that the graphic representation of its mark was not sufficiently clear and precise.
The GC held that the applicable Regulation was in fact the Trade Mark Regulation (40/94/EC).
The GC observed that, under Article 4 of the Regulation, a graphic representation must enable the sign to be represented visually, particularly by means of images, lines or characters, so that it can be precisely identified in such a way as to determine the exact subject matter of the protection afforded to the proprietor.
According to case law, a colour sign, accompanied by an internationally recognised colour identification code, may constitute a graphic representation under Article 4 (Case C-104/01 Libertel EU:C:2003:244).
In addition, according to case law, a graphic representation consisting of two or more colours, designated in the abstract and without contours, must be systematically arranged by associating the colours concerned in a predetermined and uniform way. By contrast, the mere juxtaposition of two or more colours, without shape or contours, or a reference to two or more colours “in every conceivable form”, i.e. in a manner suggesting that the colours may take a number of different shapes, does not have the qualities of precision and uniformity required by Article 4.
Case law also demonstrates that for a colour mark to be clear and to indicate origin, the graphic representation or the accompanying description must show the precise shades of the colours, the ratios and their spatial arrangement (Case T-101/15 and T-102/15 Red Bull v EUIPO EU:T:2017:852 upheld on appeal).
Further, according to Libertel, the combination of a sample of a colour with a description may constitute a valid graphic representation under Article 4 if the description is clear, precise, self-contained, easily accessible, intelligible and objective.
The GC took the relevant public to be the same as the BoA had endorsed, which was a specialist public across the EU, namely professional gardeners, qualified forestry workers and employees of companies or public bodies specialised in the field of construction or landscaping.
The GC said that, although the two colours did not have contours giving them a particular shape, the description stated that the mark took the form of a part of a chainsaw housing, the upper part of which was orange, and the lower part was grey.
As the BoA had noted, chainsaw housings are not all designed to be identical in shape. However, the GC said, differences between the housings in terms of their external appearance consisted of variations in design that did not preclude a consumer identifying a single object. Further, the description of the mark made it clear that the combination of colours did not take just any form of chainsaw housing, but rather the shape of a housing that was visibly divided into two parts, one upper and the other lower. That clarification placed a greater limit on the shapes that the chainsaw housing might take.
Therefore, considering the mark together with its description, the graphic representation did not consist of the mere juxtaposition of two or more colours, without shape or contours, without a systematic arrangement, and the colours did not take “all conceivable shapes” such that the mark lacked the precision and uniformity required by Article 4.
Further, the GC said, the average consumer only rarely has the chance to make a direct comparison between different marks and must place his or her trust in the imperfect picture of them that he or she has retained. It followed that, irrespective of the precise shape of the housing, the information provided by the description enabled the consumer to view a particular object, i.e. a chainsaw housing with two parts, the upper orange in colour and the lower grey in colour, and to recognise it at the time of purchase. That description therefore satisfied the Libertel conditions set out above.
Therefore, the GC said, the mark did consist of a systematic arrangement associating the colours in a predetermined and uniform way. Because of the description, the mark enabled the consumer to perceive and remember a particular combination that he or she might use in order to repeat, with certainty, a purchase experience, particularly as the public was a specialist public. Similarly, the competent authorities and economic operators would understand the scope of the protection afforded to the proprietor of the mark. Therefore, the mark satisfied the conditions of Article 4.
Consequently, the GC found that the BoA had erred in its assessment. The GC therefore upheld Andreas Stihl’s appeal and annulled the BoA’s decision. (Case T-193/18 Andreas Stihl AG & Co KG v EUIPO EU:T:2021:163 (24 March 2021) — to read the judgment in full, click here).