Case C-447/02 P

KWS Saat AG

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)

(Appeal – Community trade mark – Regulation (EC) No 40/94 – Absolute ground for refusal – Distinctive character – Colour per se – Orange colour)

Summary of the Judgment

1. Community trade mark – Decisions of OHIM – Compliance with the principle of due process

(Council Regulation No 40/94, Art. 73)

2. Community trade mark – Definition and acquisition of the Community trade mark – Absolute grounds for refusal – Trade marks devoid of any distinctive character – Recognition of a colour per se as having distinctive character – Acquisition in consequence of use

(Council Regulation No 40/94, Art. 7(1)(b) and (3))

1. In accordance with the second sentence of Article 73 of Regulation No 40/94 on the Community trade mark, decisions of a Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) may be based only on matters of fact or of law on which the parties have been able to set out their views.

Consequently, in the case in which the Board of Appeal assembles of its own motion facts intended to serve as a basis for its decision, it is under an obligation to notify the parties of those facts in order that the parties may submit their views thereon.

(see paras 42-43)

2. While a colour per se may acquire, for the goods or services in respect of which registration of a Community trade mark is sought, a distinctive character in consequence of the use which has been made of it, by virtue of Article 7(3) of Regulation No 40/94, in the case of a colour per se, distinctiveness without any prior use, within the meaning of Article 7(1)(b) of that regulation, is inconceivable save in exceptional circumstances, in particular where the number of goods or services for which the mark is claimed is very restricted and the relevant market very specific.

(see para. 79)

JUDGMENT OF THE COURT (Second Chamber) 21 October 2004 (1)

(Appeal – Community trade mark – Regulation (EC) No 40/94 – Absolute ground for refusal – Distinctive character – Colour per se – Orange colour)

In Case C-447/02 P,APPEAL under Article 49 of the EC Statute of the Court of Justice,lodged on 11 December 2002,

appellant,

the other party to the proceedings being:

defendant at first instance,

THE COURT (Second Chamber),,

composed of: C.W.A. Timmermans, President of the Chamber, C. Gulmann, J.‑P. Puissochet, N. Colneric and J.N. Cunha Rodrigues (Rapporteur), Judges,

Advocate General: P. Léger,

having regard to the written procedure and further to the hearing on 4 March 2004,

after hearing the Opinion of the Advocate General at the sitting on 19 May 2004,

gives the following

‘The following shall not be registered:

…

‘Paragraph 1(b), (c) and (d) shall not apply if the trade mark has become distinctive in relation to the goods or services for which registration is requested in consequence of the use which has been made of it.’

‘Decisions of the Office shall state the reasons on which they are based. They shall be based only on reasons or evidence on which the parties concerned have had an opportunity to present their comments.’

‘1.

2.‘… the use of colours, including the shade of orange claimed or very similar shades, for those goods is not rare. The sign applied for will therefore not enable the relevant public immediately and with certitude to distinguish the applicant’s goods from those of other undertakings which are coloured other shades of orange.’

‘… the Board of Appeal rightly stated, at paragraph 21 of the contested decision, that it is not rare to come across machines in that or a similar colour. It must be held that, being commonplace, the colour orange will not enable the relevant public to distinguish immediately and with certainty the applicant’s installations from machines in similar shades of orange with a different commercial origin. Rather, it will perceive the colour claimed as merely an element of the finish of the goods in question.’

‘… the sign composed of the shade of orange per se is capable of enabling the relevant public to distinguish the services concerned from those of a different commercial origin when they come to make a choice on the occasion of a subsequent purchase.’

On those grounds, the Court (Second Chamber) hereby:

Signatures.