Case C-49/02

Proceedings brought by Heidelberger Bauchemie GmbH

(Reference for a preliminary ruling from the Bundespatentgericht)

(Trade marks – Harmonisation of laws – Directive 89/104/EEC – Signs capable of constituting a trade mark – Combinations of colours – Colours blue and yellow for certain products used in the building trade)

Summary of the Judgment

Approximation of laws – Trade marks – Directive 89/104 – Signs capable of constituting a trade mark – Colours or combinations of colours – Conditions – Requirement for the competent authority to examine the other conditions for registration – Scope of the examination

(Council Directive 89/104, Arts 2 and 3)

Colours or combinations of colours which are the subject of an application for registration as a trade mark, claimed in the abstract, without contours, and in shades which are named in words by reference to a colour sample and specified according to an internationally recognised colour classification system may constitute a trade mark for the purposes of Article 2 of the First Trade Marks Directive 89/104 where:

– it has been established that, in the context in which they are used, those colours or combinations of colours in fact represent a sign, and

– the application for registration includes a systematic arrangement associating the colours concerned in a predetermined and uniform way, as the mere juxtaposition of two or more colours, without shape or contours, or a reference to two or more colours ‘in every conceivable form’ does not exhibit the qualities of precision and uniformity required by Article 2 of the directive, and/or

– the colours or combinations of colours in question are capable of conveying precise information, particularly as regards the origin of a product or service.

Even if a combination of colours satisfies the requirements for constituting a trade mark for the purposes of Article 2 of the directive, it is still necessary for the competent authority for registering trade marks to decide whether the combination claimed fulfils the other requirements laid down, particularly in Article 3 of the directive, for registration as a trade mark in relation to the goods or services of the undertaking which has applied for its registration. Such an examination must take account of all the relevant circumstances of the case, including any use which has been made of the sign in respect of which trade mark registration is sought. That examination must also take account of the public interest in not unduly restricting the availability of colours for other traders who market goods or services of the same type as those in respect of which registration is sought.

(see paras 34, 37, 42, operative part)

JUDGMENT OF THE COURT (Second Chamber) 24 June 2004 (1)

(Trade marks – Harmonisation of laws – Directive 89/104/EEC – Signs capable of constituting a trade mark – Combinations of colours – Colours blue and yellow for certain products used in the building trade)

In Case C-49/02,

REFERENCE to the Court under Article 234 EC by the Bundespatentgericht (Germany) for a preliminary ruling in the proceedings brought before that court by

on the interpretation of Article 2 of the First Council Directive (89/104/EEC) of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1),

THE COURT (Second Chamber),,

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

Advocate General: P. Léger,

after considering the written observations submitted on behalf of:

after hearing the oral observations of Heidelberger Bauchemie GmbH and the Commission at the hearing on 6 November 2003,

after hearing the Opinion of the Advocate General at the sitting on 15 January 2004,

gives the following

‘Any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trade mark. Such signs, in particular words including personal names, letters, numerals, figurative elements and combinations of colours as well as any combination of such signs, shall be eligible for registration as trade marks. Where signs are not inherently capable of distinguishing the relevant goods or services, Members may make registrability depend on distinctiveness acquired through use. Members may require, as a condition of registration, that signs be visually perceptible.’

‘A trade mark may consist of any sign capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.’

‘1.

…

‘Any sign, particularly words, including personal names, designs, letters, numerals, acoustic signs, three-dimensional forms including the shape of goods or their packaging as well as other get-ups including colours and combinations of colours, which is capable of distinguishing the goods or services of one undertaking from those of other undertakings may be protected as a trade mark.’

‘1.

2.…

3.‘The trade mark applied for consists of the applicant’s corporate colours which are used in every conceivable form, in particular on packaging and labels.

The specification of the colours is:

RAL 5015/HKS 47 – blue

RAL 1016/HKS 3 – yellow.’

‘Do colours or combinations of colours which are the subject of an application for registration as a trade mark, claimed in the abstract, without contours and in shades which are named in words by reference to a colour sample (colour specimen) and specified according to a recognised colour classification system, satisfy the conditions for capability of constituting a trade mark for the purposes of Article 2 of [the Directive]?

In particular, for the purposes of Article 2 of the Directive, is such an “(abstract) colour mark”

(a)

(b)

Even if a combination of colours satisfies the requirements for constituting a trade mark for the purposes of Article 2 of the Directive, it is still necessary for the competent authority for registering trade marks to decide whether the combination claimed fulfils the other requirements laid down, particularly in Article 3 of the Directive, for registration as a trade mark in relation to the goods or services of the undertaking which has applied for its registration. Such an examination must take account of all the relevant circumstances of the case, including any use which has been made of the sign in respect of which trade mark registration is sought. That examination must also take account of the public interest in not unduly restricting the availability of colours for other traders who market goods or services of the same type as those in respect of which registration is sought.

On those grounds,

THE COURT (Second Chamber),

in answer to the questions referred to it by the Bundespatentgericht by order of 22 January 2002, hereby rules:

Timmermans

Puissochet

Cunha Rodrigues

Schintgen

Colneric

Delivered in open court in Luxembourg on24 June 2004.

R. Grass

C.W.A. Timmermans

Registrar

President of the Second Chamber