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EuG COURT OF FIRST INSTANCE (Fourth Chamber) T201/06 dated 10 September 2008 - 3D Community trade mark paint filter partly coloured yellow

(Community trade mark – Application for a threedimensional Community trade mark – Paint filter partly coloured yellow – Absolute ground for refusal – Lack of distinctive character – Article 7(1)(b) of Regulation (EC) No 40/94)

In Case T201/06,

Louis M. Gerson Co., Inc., established in Middleboro, Massachusetts (United States), represented by M. Edenborough, Barrister,

applicant,

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by . Mondjar Ortuo, acting as Agent,

defendant,

ACTION brought against the decision of the Second Board of Appeal of OHIM of 15 May 2006 (Case R 1387/20052) concerning an application for registration as a Community trade mark of a threedimensional sign consisting of a paint filter coloured yellow near the tip,

THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (Fourth Chamber),

composed of O. Czcz, President, J. D. Cooke and I. Labucka (Rapporteur), Judges,

Registrar: C. Kantza, Administrator,

having regard to the [32703mapplication lodged at the Registry of the Court of First Instance on 1 August 2006,

having regard to the response lodged at the Court Registry on 4 December 2006,

further to the hearing on 13 May 2008,

gives the following

Judgment

 Background to the dispute

1        On 29 July 2004 the applicant, Louis M. Gerson Co., Inc., filed an application for a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended.

2        The trade [32703mmark in respect of which registration was applied for is a threedimensional sign consisting of a paint filter coloured yellow near the tip. The mark applied for is reproduced below:

 

3        The goods in respect of which registration of the trade mark was applied for are in Classes 16 and 21 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 correspond, for each of those classes, to the following description:

–        ‘paint strainers and filters, made primarily of paper and paper board; paint strainers and filters made primarily of paper and paper board and incorporating a mesh fibre element’ in Class 16;

–        ‘Filters, strainers and mesh, all for straining paint’ in Class 21.

4        By decision of 30 September 2005, the application for registration was rejected by the examiner pursuant to Article 7(1)(b) of Regulation No 40/94. In essence, the examiner found that the mark applied for was neither distinctive nor indicative of the origin of the goods, and that the application of a colour on the tip of the paint filter, whilst admittedly unusual, did not however enable a consumer to suppose that it was anything other than a simple coloration used to denote the thickness of the mesh. The examiner also stated that the perception of the relevant public was not necessarily the same in the case of a coloured threedimensional mark as it is in the case of a figurative or word mark. Furthermore, the examiner did not concur with the applicant’s claim that the consumers of the goods designated were exclusively specialists, on the ground that the relevant public included car-body shop owners and workers. While they may have expertise, they cannot be said to be highly specialised or sophisticated. Lastly, according to the examiner, the applicant’s application to register the same mark in four different colours implied that the significance of the colour scheme was more decorative than distinctive.

5        On 21 November 2005 the applicant filed an appeal against the examiner’s decision.

6        By decision of 15 May 2006 the Second Board of Appeal dismissed the appeal. In particular, it found that the mark applied for did not look like a trade mark and was unlikely to be regarded as such. It went on to state that the colour looked merely decorative and incidental and did not constitute an indicator of the origin of the goods designated which could serve as a basis for a purchasing choice by consumers. According to the Board of Appeal, even if none of the other paint filters on the market were coloured, the mere presence of a colour would not automatically make the mark applied for distinctive. The Board of Appeal considered that the applicant had failed to prove that the consumer was accustomed to making assumptions about the origin of paint filters on the basis solely of their colour and that the coloured sector of the filter would pass unnoticed, even by the most specialised consumers.

 Forms of order sought

7        The applicant claims that the Court should:

–        annul the contested decision;

–        order OHIM to pay the costs.

8        OHIM contends that the Court should:

–        dismiss the application;

–        order the applicant to pay the costs.

 Law

9        The applicant raises a single plea in law, alleging infringement of Article 7(1)(b) of Regulation No 40/94.

 Arguments of the parties

10      The applicant submits that the Board of Appeal was wrong to hold that the mark applied for was not distinctive in respect of the goods for which registration was applied for.

11      Thus, in its view, the use of colour on the mesh of a paint filter is fanciful and, above all, surprising and counter-intuitive, given that the normal user of such a filter would be concerned about tainting the paint that was being filtered. For that reason, contrary to OHIM’s view, the use of colour in the mark applied for would be noticed by the relevant public, who would associate it automatically with the only undertaking bold enough to depart from the noncoloured paint filters produced by the industry for decades. The use of colour is not therefore merely decorative, but distinctive, and indicates the trade origin of the product.

12      The applicant observes that no other manufacturer produces coloured paint filters and that that was the position for decades before it introduced its products on the market in 2005. Anything different from non-coloured filters is a radical departure and will therefore be noticed immediately by consumers, who will be able to identify the use of colour as characteristic of a unique trade source. According to the applicant, the expert opinions submitted in the procedure before the Board of Appeal confirm that state of affairs.

13      Moreover, the applicant claims that the use of colour on the mark applied for is intrinsically distinctive, which enables the average consumer of that product to distinguish the product concerned from those of other undertakings without conducting an analytical examination and without paying particular attention, in particular because the specification of goods for which registration is applied for is very narrow indeed and the relevant market very specific.

14      In this respect, the applicant states that the relevant public does not include the general public at large; rather it comprises relatively specialised consumers in the automobile paint repair industry, such as autobody workers or garage owners, who could be expected to know that paint filters have been non-coloured for several decades. Therefore, the public will perceive the mark applied for as an indication of the trade origin of the goods designated.

15      Lastly, the applicant submits that, given the relatively small number of competitors, it is unlikely that the mark applied for would unduly restrict the availability of colours.

16      OHIM contests the applicant’s arguments.

 Findings of the Court

17      Article 7(1)(b) of Regulation No 40/94 provides that trade marks which are devoid of any distinctive character are not to be registered.

18      It is apparent from settled caselaw that, for a trade mark to possess distinctive character within the meaning of Article 7(1)(b) of Regulation No 40/94, it must serve to identify the goods in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish those goods from those of other undertakings (Joined Cases C473/01 P and C474/01 P Procter & Gamble v OHIM [2004] ECR I5173, paragraph 32; Case C64/02 P OHIM v Erpo Mbelwerk [2004] ECR I10031, paragraph 42; and Case C144/06 P Henkel v OHIM [2007] ECR I8109, paragraph 34).

19      Thus, the signs referred to in Article 7(1)(b) of Regulation No 40/94 are signs which are regarded as incapable of performing such a function (Case T79/00 ReweZentral v OHIM (LITE) [2002] ECR II705, paragraph 26).

20      Further, the distinctive character of a trade mark must be assessed, first, by reference to the goods or services in respect of which registration has been applied for and, second, by reference to the perception of the relevant public (Procter & Gamble v OHIM, cited above, paragraph 33; Case C25/05 P Storck v OHIM [2006] ECR I5719, paragraph 25; and Henkel v OHIM, cited above, paragraph 35).

21      The criteria for assessing the distinctive character of three-dimensional trade marks, like the one at issue in the present case, are no different from those applicable to other categories of trade mark. However, when those criteria are applied, account must be taken of the fact that the perception of the average consumer is not necessarily the same in relation to a three-dimensional mark consisting of the appearance of the goods themselves as it is in relation to a word or figurative mark consisting of a sign which is independent of the appearance of the goods it denotes. Average consumers are not in the habit of making assumptions about the origin of products on the basis of their shape or the shape of their packaging in the absence of any graphic or word element and it could therefore prove more difficult to establish distinctiveness in relation to such a three-dimensional mark than in relation to a word or figurative mark (Case C136/02 P Mag Instrument v OHIM [2004] ECR I9165, paragraph 30; Storck v OHIM, cited above, paragraphs 26 and 27; and Henkel v OHIM, cited above, paragraph 36).

22      According to settled caselaw, the more closely the shape for which registration is sought as a trade mark resembles the shape most likely to be taken by the product in question, the greater the likelihood of that shape being devoid of any distinctive character for the purposes of Article 7(1)(b) of Regulation No 40/94 (Joined Cases C456/01 P and C457/01 P Henkel v OHIM [2004] ECR I5089, paragraph 39). Only a mark which departs significantly from the norms or customs of the sector and thereby fulfils its essential function of indicating origin is not devoid of any distinctive character for the purposes of Article 7(1)(b) of Regulation No 40/94 (Case C173/04 P Deutsche SiSiWerke v OHIM [2006] ECR I551, paragraph 31; Storck v OHIM, cited above, paragraph 28; and Case C144/06 P Henkel v OHIM, cited in paragraph 18 above, paragraph 37).

23      In the present case, as regards the shape of the mark applied for, it must be stated that it is very similar to competing goods on the market. Even if each manufacturer produces different filters, the threedimensional shape in respect of which registration was applied for is a simple shape which is amongst those which come naturally to the mind of the consumer in relation to paint filters. As the Board of Appeal rightly found at paragraph 17 of the contested decision, the shape at issue does not have any element that can be said to depart perceptibly from one of the most common shapes of such a product.

24      Next, as regards the use of the colour yellow near the tip of the filter, it must be observed that that is not sufficient to warrant the conclusion that the mark applied for enables the average consumer to distinguish the product concerned from those of other undertakings without conducting an analytical examination and without paying particular attention. Thus, the applicant’s argument that the colour would be noticed by users who would therefore identify the trade origin of the product (see paragraph 11 above) cannot be accepted. On the contrary, as the Board of Appeal states at paragraph 17 of the contested decision, the use of the colour yellow will be perceived as indicating the tip or as a decorative element, but not as a distinctive element. The use of the colour might possibly serve to distinguish between the quality or the size of different models of the same product, but is not distinctive as regards its trade origin.

25      As regards the definition of the target public, the Court concurs with OHIM’s analysis according to which, even if the goods at issue may be used by specialists, it cannot be ruled out that they are also used by less experienced consumers, who are not necessarily aware of the existence of coloured and noncoloured paint filters. It is therefore necessary to reject the applicant’s argument that the target public will immediately identify the origin of the goods on account of the fact that, given the very specific nature of the market, consumers will be certain that coloured filters are manufactured solely by the applicant.

26      Moreover, even were it the case, as the applicant asserts, that the consumer was a specialist and could be expected to know that only the applicant produced coloured paint filters, the distinctive character of the mark resulting from the application of a colour on the goods could not be accepted. That argument entails registration of the mark being based not on the use of the colour yellow in particular, but on the mere application of a colour on goods. In such circumstances, registration would unduly restrict the availability of colours for competitors, who might wish to use them on their own goods. In this respect, it must be recalled that, according to the caselaw of the Court of Justice, in assessing the potential distinctiveness 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 (Case C104/01 Libertel [2003] ECR I3793, paragraph 60).

27      In conclusion, in view of the foregoing, it must be held that the Board of Appeal did not infringe Article 7(1)(b) of Regulation No 40/94.

 Costs

28      Under Article 87(2) of the Rules of Procedure of the Court of First Instance, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs incurred by OHIM, in accordance with the form of order sought by OHIM.

On those grounds,

THE COURT OF FIRST INSTANCE (Fourth Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Louis M. Gerson Co., Inc. to pay the costs.

 

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