Keywords
Summary

Keywords

1. Approximation of laws — Trade marks — Directive 89/104 — Signs capable of constituting a trade mark — Colour per se — Conditions — (Council Directive 89/104, Art. 2)

2. Community law — Interpretation — Directives — Statement of the Council entered in its minutes — Whether to be taken into consideration — Not permissible in the absence of any reference to it in the directive itself

3. Approximation of laws — Trade marks — Directive 89/104 — Where registration of a trade mark may be refused or the trade mark declared invalid — Trade mark devoid of distinctive character — Possibility that a colour per se may be distinctive — Conditions — (Council Directive 89/104, Art. 3(1)(b) and 3(3))

4. Approximation of laws — Trade marks — Directive 89/104 — Registration of a new trade mark — Examination of a sign by the competent authority — Need for a thorough examination — (Council Directive 89/104, Arts 2 and 3)

5. Approximation of laws — Trade marks — Directive 89/104 — Where registration of a trade mark may be refused or the trade mark declared invalid — Trade mark devoid of distinctive character — Determination whether a colour per se has a distinctive character — Account taken of the public interest in not unduly restricting the availability of colours — (Council Directive 89/104, Art. 3(1)(b) and 3(3))

6. Approximation of laws — Trade marks — Directive 89/104 — Where registration of a trade mark may be refused or the trade mark declared invalid — Trade mark devoid of distinctive character — Recognition of distinctive character of a colour per se — Acquisition through use — (Council Directive 89/104, Art. 3(1)(b))

7. Approximation of laws — Trade marks — Directive 89/104 — Where registration of a trade mark may be refused or the trade mark declared invalid — Trade mark devoid of distinctive character — Recognition of distinctive character of a colour per se — Conditions — (Council Directive 89/104, Art. 3(1)(b) and 3(3))

8. Approximation of laws — Trade marks — Directive 89/104 — Where registration of a trade mark may be refused or the trade mark declared invalid — Trade mark devoid of distinctive character — Determination whether a colour has a distinctive character and the public interest in not unduly restricting the availability of colours — Account taken of the number of goods or services for which registration applied for — (Council Directive 89/104, Art. 3(1)(b) and 3(3))

9. Approximation of laws — Trade marks — Directive 89/104 — Where registration of a trade mark may be refused or the trade mark declared invalid — Trade mark devoid of distinctive character — Determination whether a trade mark has a distinctive character — Examination by reference to the actual situation, including use made of the mark — (Council Directive 89/104, Art. 3(1)(b) and 3(3))

Summary

1. A colour per se is capable of constituting a trade mark within the meaning of Article 2 of First Directive 89/104 relating to trade marks provided that it is a sign which is capable of graphic representation and of distinguishing the goods or services of one undertaking from those of other undertakings.

see paras 23, 42

2. A declaration recorded in the minutes of the Council on the occasion of the adoption of a directive cannot be used for the purpose of interpreting a provision of that directive where no reference is made to the content of that declaration in the wording of the provision in question and therefore has no legal scope.

see paras 25-26

3. A colour per se , not spatially delimited, may, in respect of certain goods and services, have a distinctive character within the meaning of Article 3(1)(b) and (3) of First Directive 89/104 relating to trade marks, provided that, inter alia , it may be represented graphically in a way that is clear, precise, self-contained, easily accessible, intelligible, durable and objective. The latter condition cannot be satisfied merely by reproducing on paper the colour in question, but may be satisfied by designating that colour using an internationally recognised identification code.

see para. 68, operative part 1

4. The large number and detailed nature of the obstacles to registration of a trade mark set out in Articles 2 and 3 of First Directive 89/104 relating to trade marks, and the wide range of remedies available in the event of refusal, indicate that the examination carried out by the competent authority at the time of the application for registration must not be a minimal one. It must be a stringent and full examination, in order to prevent trade marks from being improperly registered.

For reasons of legal certainty and good administration, it is necessary to ensure that trade marks whose use could successfully be challenged before the courts are not registered.

see para. 59

5. In assessing the potential distinctiveness, within the meaning of Article 3(1)(b) and (3) of First Directive 89/104 relating to trade marks, of a given colour as a trade mark, regard must be had to the general interest in not unduly restricting the availability of colours for the other traders who offer for sale goods or services of the same type as those in respect of which registration is sought.

see para. 60, operative part 2

6. In the case of a colour per se , distinctiveness without any prior use, within the meaning of Article 3(1)(b) of First Directive 89/104 relating to trade marks is inconceivable save in exceptional circumstances. However, even if a colour per se does not initially have any such distinctive character, it may acquire such character in relation to the goods or services claimed following the use made of it, pursuant to Article 3(3) of the Directive. That distinctive character may be acquired, inter alia , after the normal process of familiarising the relevant public has taken place.

see paras 66-67

7. A colour per se may be found to possess distinctive character within the meaning of Article 3(1)(b) and (3) of First Directive 89/104 relating to trade marks, provided that, as regards the perception of the relevant public, the mark is capable of identifying the product or service for which registration is sought as originating from a particular undertaking and distinguishing that product or service from those of other undertakings.

see para. 69, operative part 3

8. The fact that registration as a trade mark of a colour per se is sought for a large number of goods or services, or for a specific product or service or for a specific group of goods or services, is relevant, together with all the other circumstances of the particular case, to assessing both the distinctive character, within the meaning of Articles 3(1)(b) and (3) of First Directive 89/104 relating to trade marks, of the colour in respect of which registration is sought, and whether its registration would run counter to the general interest in not unduly limiting the availability of colours for the other operators who offer for sale goods or services of the same type as those in respect of which registration is sought.

see para. 71, operative part 4

9. In assessing whether a trade mark has distinctive character within the meaning of Article 3(1)(b) and (3) of First Directive 89/104 relating to trade marks, the competent authority for registering trade marks must carry out an examination by reference to the actual situation, taking account of all the circumstances of the case and in particular any use which has been made of the mark.

see para. 77, operative part 5