4 May 2023 (*)

(EU trade mark – International registration designating the European Union – Mark consisting in a combination of the colours green and orange – Absolute ground for refusal – No distinctive character – Article 7(1)(b) of Regulation (EU) 2017/1001 – Action manifestly lacking any foundation in law)

In Case T‑618/22,

established in Hasbergen-Gaste (Germany), represented by C. Neuhierl, lawyer,

applicant,

European Union Intellectual Property Office (EUIPO),

represented by T. Frydendahl, acting as Agent,

defendant,

THE GENERAL COURT (Seventh Chamber),

composed of K. Kowalik-Bańczyk (Rapporteur), President, E. Buttigieg and B. Ricziová, Judges,

Registrar: T. Henze, Acting Registrar,

having regard to the written part of the procedure,

makes the following

By its action based on Article 263 TFEU, the applicant, Amazonen-Werke H. Dreyer SE & Co. KG, seeks annulment of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 22 July 2022 (Case R 2006/2021-5) (‘the contested decision’).

Background to the dispute

On 18 April 2019, the applicant filed an application for protection of international registration No 1 461 516 with EUIPO in respect of the following sign:

The mark applied for designated the goods in Class 7 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and corresponding to the following description: ‘Agricultural machines and implements, namely field sprayers’.

In the application for registration, the mark applied for is described as follows: ‘The trademark consists of a combination of the colours green (Pantone 7742 C) and orange (Pantone 1505 C); the frame including the nozzle support frame of the field sprayer is green; attachments to the frame, including nozzle holders, container and cover, are orange.’

By decision of 17 November 2021, the examiner rejected the application for registration of that mark on the basis of Article 7(1)(b) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1).

On 1 December 2021, the applicant filed a notice of appeal with EUIPO against the examiner’s decision.

By the contested decision, the Board of Appeal dismissed the appeal on the ground that the mark applied for was devoid of any inherent distinctive character under Article 7(1)(b) of Regulation 2017/1001. It noted, in particular, in that regard, that that mark had to be regarded as a colour mark and that the colours green and orange were common in the market of agricultural machines. Lastly, it remitted the case to the examiner to assess whether distinctive character had been acquired through use on the basis of Article 7(3) of that regulation.

Forms of order sought

The applicant claims that the Court should:

–annul the contested decision;

–order EUIPO to pay the costs.

EUIPO contends that the Court should:

–dismiss the action;

–order the applicant to pay the costs in the event that a hearing is held.

Under Article 126 of the Rules of Procedure of the General Court, where the action is manifestly inadmissible or manifestly lacking any foundation in law, the General Court may, on a proposal from the Judge-Rapporteur, at any time decide to give a decision by reasoned order without taking further steps in the proceedings. In the present case, the Court considers that it has sufficient information from the documents before it and decides, pursuant to that article, to give its decision without taking further steps in the proceedings, even though one of the parties has requested a hearing.

In support of the action, the applicant relies on a single plea in law, alleging infringement of Article 7(1)(b) of Regulation 2017/1001. More specifically, it submits that the Board of Appeal incorrectly found that the mark applied for was devoid of any distinctive character.

EUIPO contests the applicant’s argument.

It should be borne in mind that, under Article 7(1)(b) of Regulation 2017/1001, trade marks which are devoid of any distinctive character are not to be registered.

The distinctive character of a mark within the meaning of Article 7(1)(b) of Regulation 2017/1001 means that that mark makes it possible to identify the product in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish that product from those of other undertakings (see judgment of 21 January 2010, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraph 33 and the case-law cited). That character must be assessed, first, by reference to the products or services in respect of which registration has been applied for and, second, by reference to the perception of the relevant public (see judgment of 29 April 2004, Henkel v OHIM, C‑456/01 P and C‑457/01 P, EU:C:2004:258, paragraph 35 and the case-law cited).

Furthermore, although the criteria relating to the assessment of distinctive character are the same for colour marks and figurative marks, it is apparent from the case-law of the Court of Justice that the perception of the relevant public is not necessarily the same in the case of a sign consisting of a colour per se as it is in the case of a word or figurative mark. While the public is accustomed to perceiving word or figurative marks instantly as signs identifying the origin of the product, a colour per se is not normally inherently capable of distinguishing the goods of a particular undertaking (see, by analogy, judgment of 27 March 2019, Hartwall, C‑578/17, EU:C:2019:261, paragraph 29).

Moreover, in assessing the potential distinctive character of a colour per se or a colour combination 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, by analogy, judgment of 27 March 2019, Hartwall, C‑578/17, EU:C:2019:261, paragraph 31).

In the present case, first, it should be noted that the applicant does not dispute the definition of the relevant public adopted by the Board of Appeal, according to which the public concerned by the perception of the distinctive character of the mark applied for is made up of professionals and, in particular, farmers.

Second, the Board of Appeal found that the mark applied for was devoid of any distinctive character on the ground (i) that the colours green and orange referred, in particular, for the relevant public, to ecology and warning respectively and (ii) that those colours were, irrespective of their meaning, frequently used in the sector of agricultural machines.

It follows that, contrary to what the applicant claims, the Board of Appeal did not rely solely on the meaning of the colours green and orange for the relevant public in order to find that the mark applied for was devoid of any distinctive character.

Third, it should be noted that, admittedly, the inherent distinctiveness of a colour is inconceivable save in exceptional circumstances, where the number of goods or services for which the mark is claimed is very restricted and the relevant market very specific (see, to that effect and by analogy, judgment of 6 May 2003, Libertel, C‑104/01, EU:C:2003:244, paragraph 66). However, contrary to what the applicant suggests, it cannot be inferred that any colour mark is necessarily distinctive on the sole ground that it designates only a very restricted number of goods or services and that the relevant market is very specific (see, to that effect, judgment of 26 October 2022, Lemken v EUIPO (Shade of sky blue), T‑621/21, not published, EU:T:2022:676, paragraph 50).

More specifically, in this case, the applicant does not dispute that the colours green and orange are frequently used in the sector of agricultural machines. It merely complains that the Board of Appeal did not establish the existence of that use specifically for agricultural sprayers.

It should be noted that agricultural sprayers are agricultural machines and that the applicant does not explain why the combination of the colours green and orange would be perceived differently depending on whether they are agricultural sprayers or other agricultural machines. Furthermore, although the applicant claims, in essence, that no other undertaking uses the combination of the colours green and orange to market agricultural sprayers, it adduces no evidence to show that the other undertakings use other colours in that regard.

In those circumstances, it must be held that the Board of Appeal rightly found that the combination of the colours green and orange was not capable of indicating the origin of the goods at issue and, consequently, that the mark applied for was devoid of any distinctive character.

It follows from the foregoing that the applicant’s single plea in law must be rejected as manifestly lacking any foundation in law. Consequently, the action must be dismissed in its entirety.

Costs

Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.

In the present case, EUIPO has applied for the applicant to be ordered to pay the costs only in the event that a hearing is held. Consequently, since the Court has decided to rule without an oral part of the procedure, each party must be ordered to bear its own costs.

On those grounds,

hereby orders:

1.The action is dismissed.

2.Each party shall bear its own costs.

Luxembourg, 4 May 2023.

Acting Registrar

President

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Language of the case: English.