Date: 5 June 2019
In the Spring 2018 issue of Make Your Mark, we considered all sorts of colours and shapes in cases concerning non-traditional marks, including a dispute between rival wind energy manufacturers in Enercon v EUIPO (T-36/16). The CJEU has now confirmed the finding of the General Court in that case, and held that the distinctiveness of a sign as an EU trade mark must be assessed according to the category as described in the application for registration (C 433/17 P Enercon GmbH v EUIPO).
In January 2003, Enercon GmbH obtained a EUTM registration for the following sign covering “Wind energy converters, and parts therefor”:
Enercon had identified the sign as a “colour mark” in the application form and had used a colour code to describe the colours applied for.
In March 2009, Gamesa Eólica SL applied for a declaration of invalidity, which was granted on the basis that Enercon’s mark lacked distinctive character. Enercon appealed, and the First Board of Appeal annulled the Cancellation Division’s decision.
Gamesa Eólica SL appealed to the General Court and the Court reversed the First Board of Appeal’s decision. The case was then remitted to the Second Board of Appeal, which took the view that the sign should be assessed as a colour mark and the message it conveyed was exclusively aesthetic, rather than communicating the origin of trade. Enercon appealed to the General Court, which agreed with the Second Board of Appeal.
Enercon appealed to the CJEU, arguing that, when determining the nature of the mark, the Court should have considered not only its classification on the form but also the whole content of the form, and should have assessed the distinctiveness of its sign as a figurative mark as depicted in the representation filed with the form, rather than as a colour mark as it was described on the application form.
The CJEU rejected Enercon’s argument, finding that “the designation of the category of mark by the applicant for registration of an EU trade mark is a legal requirement” and so was not merely a matter of administrative convenience, as Enercon had argued.
The CJEU held that, according to Article 26(3) of the EUTMR, an application for registration of an EU trade mark must comply with the conditions set out in the Implementing Regulation (2868/95/EC) and, therefore, had to mention which of the categories referred to in Rule 3 of the Implementing Regulation the mark fell into.
According to the CJEU, Enercon was, in fact, seeking to circumvent the requirements of Article 43(2) of the EUTMR, which governs the amendments that can be made to EUTM applications and does not allow the category of EUTM chosen by the applicant in its application to be changed. The CJEU noted that, if the General Court was 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 - then the applicant’s obligation to categorise the mark applied for, and the fact that this subsequently could not be changed, would deprive Article 43(2) of the EUTMR of all practical effect.
Therefore, the CJEU refused to overturn the declaration of invalidity, and held that the General Court had been fully entitled to take the view that the distinctive character of the mark had to be assessed as a colour mark, which proved fatal. Though Enercon’s mark contained five different shades of green along with the colour white, its choice of green was nevertheless problematic since that specific colour is often associated with being environmentally friendly and wind power is a form of renewable clean energy. As such, the relevant public was unlikely to perceive the various shades of green in Enercon’s mark as an indication of commercial origin.
The case demonstrates the important role that categorising the mark plays in the assessment of distinctiveness. The CJEU has confirmed that distinctiveness should be assessed based on the category chosen by the applicant in the application for registration and not on all potentially relevant categories as perceived by the relevant public.