Core of the issue
T‑168/21, Magnetec GmbH v EUIPO, General Court, 5th October 2022.
Teresa So reveals why an appeal argument attracted agreement
Key points
- This decision reiterates that colours can be recognised as inherently distinctive and registrable in exceptional circumstances only
- While this case does not provide sweeping changes to the assessment of registrability of colour per se marks, it highlights that the distinctiveness of a mark must be evaluated having regard to the average consumers of the relevant goods and/or services
In a recent decision, the General Court (GC) considered whether a colour mark could be sufficiently distinctive to be registered as an EU trade mark (EUTM) for goods in classes 6, 9 and 17.
On 13th February 2019, the German electromagnetic component manufacturer Magnetec GmbH (Magnetec) filed EUTM application No. 018022608 for a colour mark (colour code RAL:5012). The application was filed for: a range of alloy goods in class 6; magnetic cores, inductive components, motor cables and related goods in class 9; and insulating sheaths for the electrical wrapping of cables and insulating sheaths for the electrical wrapping of wires in class 17.
On 26th November 2019, the EUIPO refused the application on the basis that the mark is devoid of any distinctive character under Article 7(1)(b) of Regulation 2017/1001 (EUTMR).
Magnetec moves
On 27th January 2020, Magnetec appealed the decision and filed a limitation of the goods. The EUIPO Board of Appeal (BoA) then took the following three actions:
- The BoA dismissed Magnetec’s limitation of goods as inadmissible on the ground that the limitation “blurred the boundaries” between raw materials and finished products, and therefore did not satisfy the conditions of Articles 33 and 49(1) EUTMR, which require goods and services to be identified with sufficient clarity and precision.
- The BoA considered that the EUIPO Examiner had not taken into consideration the Applicant’s request that the intrinsic distinctive character of the mark applied for be examined first.
- The BoA found, in any event, that the claimed colour was devoid of any distinctive character for the goods covered by the application.
Consequently, the BoA dismissed the appeal and referred the case back to the Examiner to assess the existence of the distinctive character acquired through the use of the mark.
General Court appeal
Magnetec appealed to the GC, relying on two pleas in law. First, infringement of Articles 33 and 49(1) EUTMR.
This plea concerned the admissibility of Magnetec’s limitation of its goods, and in essence, the GC sided with Magnetec, holding that the limitation request was sufficiently clear for the purpose of Articles 33 and 49(1) EUTMR and that the BoA was wrong to consider the limitation as inadmissible.
Its second plea focused on infringement of Article 7(1)(b) EUTMR. This concerned the registrability of colour marks pursuant to Article 7(1)(b).
In considering this ground of appeal, the GC reiterated the well‑known principles, namely that: the distinctive character of a trade mark must be assessed first in relation to the goods or services for which registration is sought, and second in relation to the relevant public’s perception of them.
In particular, in order for a mark to be registrable, the GC asserted that: “colours or combinations of colours must fulfil three conditions:
(1) They must constitute a sign;
(2) the sign must be capable of graphic representation; and
(3) the sign must be capable of distinguishing the goods or services of one undertaking from those of other undertakings.”
In the BoA decision, it considered that magnetic cores in class 9 were used for electromagnetic and electrical shielding, which are special components to be inserted into larger machines or installations and would be used in a way that is not visible to the user.
As such, the relevant consumer for these goods would be the specialised public throughout the EU dealing with these machines or installations, who would have a high level of professional knowledge in the electrotechnical field.
The BoA took the view that this does not apply to the class 6 and 17 goods, which “would be of interest to a wider range of customers”.
The GC held that the BoA’s position that goods in classes 6 and 17 would be of interest to a wider range of customers does not make it possible, clearly and unequivocally, to establish the target audience for these products.
As a result, the BoA defined the relevant public in relation to magnetic cores in class 9 only, and not for the remaining goods.
No sweeping changes
In coming to this conclusion, the GC reiterated that the distinctive character of a mark must – in particular – be assessed in relation to the perception of the relevant public.
This is all the more so since, in the case of a colour per se mark, a distinctive character can only be conceived before any use in exceptional circumstances.
Since the EUIPO had failed to identify properly the relevant public for all the goods applied for, the GC upheld Magnetec’s appeal and annulled the BoA decision in its entirety.
While this case does not provide sweeping changes to the assessment of registrability of colour per se marks, it highlights that the distinctiveness of a mark must be evaluated having regard to the average consumers of the relevant goods and/or services.
Decision available in French and German only.
