Facts

Aktiebolaget Östgötatrafiken (AO) owns the three Swedish figurative marks shown below in Class 39 covering transport services:

In November 2016, AO applied to the Swedish Patent Office (PRV) to register three further marks, again in Class 39, covering transport services. The applications were filed with the description: “Colouring of vehicles in the colours red, white and orange, as shown”. AO also specified that the applications did not relate to the actual shape of the vehicles or the black or grey areas of the shape.

The PRV rejected the applications on the grounds that: (i) the signs were merely decorative; (ii) they could not be perceived as signs capable of distinguishing the services covered; and (iii) they were devoid of distinctive character.

AO challenged the PRV’s decision in the Swedish courts, claiming that the application marks were “position marks”, consisting of ellipses of different sizes and in the colours red, orange and white, with a specific size and placed in a specific position on buses and trains. It provided the following images to make it clear that the protection applied for did not cover the shape of the vehicles:

AO submitted that the signs created an impression comparable to that of its earlier registered marks and that their distinctive character should not be assessed differently solely on the basis that they were intended to be placed in a certain way on vehicles. Further, it said, transport companies often put their own graphics or colouring on their vehicles and users of the services regarded those graphics or colourings as indicators of commercial origin.

The Swedish court dismissed the appeal on the ground that the evidence did not show that the colours and shape of the signs applied for were sufficiently different to the way in which other undertakings decorated their vehicles, such that the signs would be perceived by the relevant public as an indication of commercial origin.

AO appealed to the Swedish Court of Appeal, which asked the CJEU whether Article 3(1)(b) of the Trade Mark Directive (2008/95/EC) should be interpreted as meaning that the distinctive character of a sign for which registration as a trade mark is sought, for a service, which consists of colour motifs and which is intended to be affixed exclusively and systematically in a specific manner to a large part of the goods used for the provision of that service, must be assessed in relation to those goods and by examining whether that sign departs significantly from the norm or customs of the economic sector concerned.

Decision

The CJEU said that, in order to assess the distinctive character of a sign within the meaning of Article 3(1)(b), the relevant authority must carry out an examination by reference to the actual situation, taking into account all the relevant circumstances of the case, including, where appropriate, the use made of that sign. Therefore, if an application concerned a sign to be fixed exclusively and systematically in a specific way to a large part of the goods used to provide the services, then the distinctive character of that sign could not be assessed independently of the perception of the relevant public of the sign as fixed to those goods.

Even if the goods used to provide the services were not the subject of the application, the fact remained, the CJEU said, that the relevant public would perceive the colour motifs of the sign as being fixed to the goods.

The CJEU said that it was for the Swedish court to determine, by reference to the actual situation in the case, whether the systematically arranged colour combinations were capable of conferring inherent distinctive character on the signs. If the analysis showed that applying the colours to the vehicles enabled the average consumer to distinguish between the transport services provided by AO and those provided by other undertakings, then the signs would be inherently distinctive. If the analysis showed the opposite, that did not preclude the signs becoming distinctive through use.

Therefore, the CJEU said, it was not necessary to examine whether the signs departed significantly from the norm or customs of the economic sector concerned. That was only necessary to consider where the sign consisted of:

1. the shape of the product for which registration was sought, average consumers not being in the habit of making assumptions about the origin of products on the basis of their shape or the shape of their packaging in the absence of any graphic or word element; or
2. the representation of the layout of the physical space in which the services were provided.

Although the transport vehicles were shown in dotted lines in the applications in order to indicate where the marks were intended to be affixed and the outlines of those marks, the signs were not indissociable from the shape or packaging of the goods, but nor was their purpose to represent the physical space in which the services were provided. The signs consisted of colour compositions, which were systematically arranged and spatially limited. The applications therefore related to clearly defined graphic elements that were not intended to represent the services simply by reproducing the lines and contours thereof.

Therefore, the CJEU concluded that Article 3(1)(b) should be interpreted as meaning that the distinctive character of a sign for which registration as a trade mark in respect of a service is sought, which sign consists of coloured motifs and which is intended to be affixed exclusively and systematically in a specific manner to a large part of the goods used for the provision of that service, must be assessed by taking into account the perception of the relevant public of the affixing of that sign to those goods, without it being necessary to examine whether that sign departs significantly from the norm or customs of the economic sector concerned. (Case C-456/19 Aktiebolaget Östgötatrafiken v Patent- och registreringsverket EU:C:2020:813 (8 October 2020) — to read the judgment in full, click here).