HomeInsightsCourt of Justice of the European Union upholds General Court’s decision that a colour mark was invalid for lack of distinctiveness and confirms that designation of a mark as a “colour mark” at point of application is material to assessment of validity

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In August 2001, the claimant, Enercon GmbH, filed an application to register a EU trade mark for the following sign:

The registration was sought for goods in class 7, namely “Wind energy converters, and parts therefor”.

The mark was identified in the application form as a “colour mark” and a description of the colours applied for was provided by means of a colour code.

The mark was registered in January 2003.

In March 2009, Gamesa Eólica SL, applied for a declaration of invalidity, which was granted on the basis of Article 7(1)(b) (devoid of distinctive character) of the EU Trade Mark Regulation (207/2009/EC).  Enercon appealed and the First Board of Appeal annulled the Cancellation Division’s decision.

On appeal by Gamesa Eólica SL, the General Court found that the First BoA had erred in finding that the mark was not a colour mark, but rather a two-dimensional figurative mark made up of colours.

The case was remitted to the Second BoA, which held that the mark was indeed a colour mark and, as a result, devoid of distinctive character under Article 7(1)(b).

Enercon appealed to the General Court, which agreed with the Second BoA that since the mark had been designated as a colour mark in the application form, that was how it had to be assessed.  It said that the BoA was fully entitled to find that the mark was devoid of any distinctive character having assessed the mark according to the category that Enercon had chosen on the application for registration, i.e. as a colour mark.

Enercon appealed to the CJEU, arguing that that the GC should have held that designating a mark to a particular category in the application form was primarily for the administrative convenience of EUIPO and not for legal reasons.  Therefore, when determining the nature of the mark, the GC should have considered not only its classification on the form, but also the whole content of the form, in particular the representation of the mark, as filed with the form.

CJEU decision

The CJEU rejected Enercon’s argument, finding that the designation of the category of mark by an applicant for registration of a EU trade mark was a legal requirement, not merely for administrative convenience.

The CJEU held that, under the EU Trade Mark Regulation, an application for registration of a EU trade mark must comply with the conditions set out in the Implementing Regulation (2868/95/EC), and must, therefore, state within which of the categories referred to in Rule 3 of that Regulation the mark falls.

The CJEU said that Enercon was, in fact, trying to circumvent the requirements set out in Article 43(2) of the EU Trade Mark Regulation, which governs the amendments that can be made to applications.  However, Article 43(2) does not specifically allow the applicant to change the category of the mark as originally stated on the application form.

The CJEU pointed out that, if the GC were required to examine the distinctiveness of a mark applied for, not only in the light of the category chosen by the applicant in its application, but also in the light of all other potentially relevant categories, the requirement to categorise the mark applied for and the fact that this cannot be changed pursuant to the Implementing Regulation would be deprived of all practical effect.

Therefore, the GC was fully entitled to take the view that the distinctive character of the mark had to be assessed according to the category of mark chosen on the application form, i.e. a colour mark. (Case C-433/17 P Enercon GmbH v European Union Intellectual Property Office EU:C:2018:860 (25 October 2018) — to read the judgment in full, click here).