Appeal brought on 2 February 2011 by Deutsche Bahn AG against the judgment of the General Court (Eighth Chamber) delivered on 12 November 2010 in Case T-404/09 Deutsche Bahn AG v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)

(Case C-45/11 P)

2011/C 130/18

Language of the case: German

Parties

Appellant: Deutsche Bahn AG (represented by: K. Schmidt-Hern, Rechtsanwalt)

Other party to the proceedings: Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) (represented by: G. Schneider, acting as Agent)

Form of order sought

Pleas in law and main arguments

The present appeal is against the judgment of the General Court by which that Court dismissed the appellant’s action for annulment of the decision of the First Board of Appeal of the Office for Harmonisation in the Internal Market of 23 July 2009 relating to the rejection of its application for registration of a figurative mark, which consists of a horizontal combination of the colours grey and red.

The appellant relies on four grounds of appeal in support of its appeal, which is based on infringement of Article 7(1)(b) of Regulation (EC) No 207/2009.

First of all, the General Court based its examination of distinctive character on a sign other than the mark applied for. The General Court did not examine the sign in its entirety, but merely based that examination on a random combination of the colours light grey and traffic-light red. The specific features of the colour system were not taken into account in the present case although the specific arrangement of those colours in the mark at issue is a part of the trade mark application and makes the sign specific.

Secondly, in the course of the assessment of distinctive character, the General Court did not consider for which specific services the trade mark application has been filed and examined its inability to be protected with regard to completely different goods. The alleged lack of distinctive character of the mark was deduced in the judgment from the circumstance that particular items or goods usually bear the colours in question (parts of railway engines and safety enclosures for electrical equipment beside railway lines; traffic signs; level crossing barriers and rail transport traffic signs; trains and the borders of railway platforms). The trade mark application in respect of the mark at issue has not however been filed in respect of those goods. The General Court did not state a reason why the circumstance that the mark at issue may possibly be incapable of being protected in respect of certain goods from the transport or rail transport sector should also provide a reason why the mark applied for in the present case in respect of services should be incapable of being protected.

Thirdly, the General Court based its assessment of the mark’s distinctive character on incorrect legal bases in that it assessed the distinctive character of marks in respect of goods and marks in respect of services in the same way. The General Court failed to recognise that the public does not necessarily perceive different categories of signs in the same way. Whereas the consumer may not be accustomed to deducing the origin of the goods from their colour or packaging in the absence of graphical or word elements since goods and packaging are usually coloured, the situation is completely different as regards services. As services are by nature colourless, the consumer’s perception of colours for services is totally different from his perception of colours for goods. Consequently, a difference should be made between goods and services in assessing the distinctive character of colours.

Fourthly, in assessing the distinctive character of the mark in question the General Court distorted the relevant facts and did not sufficiently state the reasons for its judgment. The General Court assumed without any grounds that horizontal bands of colour are usually used as decorative elements on trains. In doing so, it failed to recognise that the present case relates to an assessment of the distinctive character of a specific colour mark and not to stripes on railway wagons in general. Likewise, the General Court failed to recognise that the trade mark application in respect of mark at issue was not filed in respect of railway wagons, but in respect of services in Class 39. Lastly, the appellant made extensive submissions on the point that colour elements in the rail transport sector are not understood as decorative elements, but as indications of origin. The General Court did not assess those arguments put forward by the appellant.