Vaderstad v EUIPO (Position d'une combinaison d'elements de presentation) (EU trade mark - Judgment) [2024] EUECJ T-361/23 (11 September 2024)

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( EU trade mark – Applications for EU trade marks consisting of the position of a combination of presentational features – Subject matter of the dispute – Absolute ground for refusal – No distinctive character – Article 7(1)(b) of Regulation 2017/1001 )

Väderstad Holding AB, established in Väderstad (Sweden), represented by L. Webster, lawyer,

European Union Intellectual Property Office (EUIPO), represented by T. Klee, acting as Agent,

composed of F. Schalin, President, I. Nõmm (Rapporteur) and G. Steinfatt, Judges,

having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,

1 By its actions under Article 263 TFEU, the applicant, Väderstad Holding AB, seeks the annulment of the decisions of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 13 April 2023 (Cases R 58/2021-2 and R 59/2021-2) in so far as they concern ‘seed drills’ and ‘agricultural implements for seedbed preparation, levelling and reconsolidation of soil’, and of the decisions of the Second Board of Appeal of EUIPO of 13 April 2023 (Cases R 60/2021-2 and R 61/2021-2) in so far as they concern ‘planters’ (together, ‘the contested decisions’).

2 On 30 September 2019, the applicant filed with EUIPO applications for the registration of EU trade marks for the following signs:

3 In the applications for registration, each of the marks applied for was indicated as being a ‘position mark’ and described as follows:

‘The trade mark consists of the colours red “[PMS 186]”, black “[PMS Black]” and yellow “[PMS 7549]” applied to the vehicle as shown. The shape bordered by dotted lines is intended to show the position of the trade mark and does not form part of the trade mark, and no exclusive right is sought for the shape of the vehicle itself.’

4 The mark applied for designated goods in Classes 7 and 12 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, corresponding, for each of those classes, to the following description:

– Class 7: ‘Agricultural, gardening and forestry machines and apparatus; Agricultural machines; Agricultural machines; Robotic mechanisms used in agriculture; Agricultural machine tools’;

– Class 12: ‘Tractors for agricultural purposes; Trailers [vehicles]; Trailer hitches for vehicles’.

5 On 12 November 2020 (Case T‑361/23) and on 25 November 2020 (Cases T‑362/23 to T‑364/23), the examiner dismissed, on the ground that they were devoid of any distinctive character, the applications for registration of those marks, 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).

6 On 12 January 2021, the applicant filed notices of appeal with EUIPO against the examiner’s decisions. On 12 March 2021, it filed written statements setting out the grounds of those appeals.

7 By communications from the Rapporteur of 21 July 2021, the Board of Appeal informed the applicant that it intended to refuse registration of the marks applied for, in part or in full, on the basis of Article 7(1)(a) of Regulation 2017/1001. After stating that an objection on the basis of that provision could be raised with regard to the goods on which the positioning of the mark was unclear, it asked the applicant to identify the specific goods covered by the representations in the applications for registration.

8 On 23 August 2021, the applicant submitted its observations on the Rapporteur’s communications of 21 July 2021.

9 By the contested decisions, the Board of Appeal dismissed the appeals. It found that the marks applied for had to be refused registration in their entirety.

10 In particular, first, the Board of Appeal took the view that, in relation to all the goods covered by the marks applied for, other than ‘seed drills’ and ‘agricultural implements for seedbed preparation, levelling and reconsolidation of soil’ (Cases T‑361/23 and T‑362/23), and ‘planters’ (Cases T‑363/23 and T‑364/23), an objection under Article 7(1)(a) of Regulation 2017/1001 had to be raised, since the positioning of those marks did not appear clearly on those goods. Secondly, it found that, in respect of ‘seed drills’ and ‘agricultural implements for seedbed preparation, levelling and reconsolidation of soil’ (Cases T‑361/23 and T‑362/23), and ‘planters’ (Cases T‑363/23 and T‑364/23), the trade marks applied for were devoid of any distinctive character within the meaning of Article 7(1)(b) of that regulation. Furthermore, the Board of Appeal found that the conclusion concerning the assessment of Article 7(1)(b) of that regulation also applies to all the other goods in respect of which the marks had been applied for, given that they are all intended for use in the agricultural sector and have a sufficiently direct and specific link between them in the sense that they form a category or a group of goods which is sufficiently homogenous to allow general reasoning to be applied.

– in the alternative, annul the contested decisions in so far as they concern ‘seed drills’ and ‘agricultural implements for seedbed preparation, levelling and reconsolidation of soil’ (Cases T‑361/23 and T‑362/23) and ‘planters’ (Cases T‑363/23 and T‑364/23) in Class 7;

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

13 By letter of 19 October 2023, together with copies of the requests for restriction of the lists of goods contained in the applications for registration of the marks applied for exclusively to ‘seed drills’ and ‘agricultural implements for seedbed preparation, levelling and reconsolidation of soil’ (Cases T‑361/23 and T‑362/23) and exclusively to ‘planters’ (Cases T‑363/23 and T‑364/23) in Class 7 (together, ‘the goods at issue’), filed with EUIPO on the same day, the applicant indicated to the Court that it intended to restrict the scope of the present actions by relying solely on an infringement of Article 7(1)(b) of Regulation 2017/1001 as regards those applications for registration in relation to the goods at issue.

14 In its observations, submitted to the Court Registry on 9 November 2023, EUIPO states that the Court may take into account the requests for restriction of the lists of goods contained in the applications for registration of the marks applied for submitted by the applicant only in so far as those requests for restriction seek to delete the goods in Class 12. According to EUIPO, that deletion should be interpreted as a statement that the contested decisions are no longer contested to the extent that they cover those goods. On the other hand, it finds that those requests for restriction, in so far as they relate to the goods in Class 7, must be rejected as inadmissible, since they affect the examination of the applications for registration of the marks applied for and therefore amount to an alteration of the subject matter of the dispute in the course of the proceedings.

15 According to settled case-law, the Court may annul or alter a decision of a Board of Appeal of EUIPO only if, at the time the decision was adopted, it was vitiated by one of the grounds for annulment or alteration referred to in Article 72(2) of Regulation 2017/1001. In accordance with Article 95 of that regulation, the Court must give judgment in the light of the factual and legal context of the dispute as it was brought before the Board of Appeal. The Court may not annul or alter the Board of Appeal’s decision on grounds which come into existence subsequent to its adoption (see judgment of 28 November 2019, Runnebaum Invest v EUIPO – Berg Toys Beheer (Bergsteiger), T‑736/18, not published, EU:T:2019:826, paragraph 32 and the case-law cited).

16 Furthermore, a statement by the trade mark applicant subsequent to the decision of the Board of Appeal, in which he or she withdraws his or her application in respect of some of the goods covered by the initial application, may be interpreted as a statement that the contested decision is being challenged only in so far as it covers the remainder of the goods concerned or as a partial withdrawal, where that statement is made at an advanced stage of the proceedings before the Court. Thus, such a limitation must be taken into account by the Court, since it is being asked to review the legality of the Board of Appeal’s decision not in so far as it relates to the goods or services withdrawn from the list but only in so far as it relates to the other goods or services remaining on that list (see judgment of 28 November 2019, Bergsteiger, T‑736/18, not published, EU:T:2019:826, paragraph 33 and the case-law cited).

17 In the present case, it is common ground that the requests for restriction were made after the contested decisions were adopted.

18 It is true that, as stated by EUIPO, it is apparent from the case-law that, where the object of the restriction of the list of goods or services covered by the applicant is to change, in whole or in part, the description of those goods or services, it is possible that the alteration might have an effect on the examination of the trade mark in question carried out at various stages by EUIPO in the course of the administrative procedure. Accordingly, to allow that alteration at the stage of the action before the Court would amount to changing the subject matter of pending proceedings, which is prohibited by Article 188 of the Rules of Procedure of the Court (see judgment of 10 February 2021, EAB v EUIPO (RADIOSHUTTLE), T‑341/20, not published, EU:T:2021:72, paragraph 22 and the case-law cited).

19 However, in the present case, the requests for restriction filed by the applicant overlap with the division of goods as carried out by the Board of Appeal during the examination of the applications for registration, with the result that the subject matter of the dispute before the Board of Appeal is not altered. The Board of Appeal ruled on the registration of the marks applied for both for the broader categories of goods listed in those applications for registration and for the goods at issue which are indicated, in those requests for restriction, as goods to which those requests for registration are restricted.

20 Therefore, it is necessary to take into account the requests for restriction submitted by the applicant and to interpret the actions as meaning that the applicant seeks the annulment of the contested decisions only in so far as the Board of Appeal found that the marks applied for had to be refused registration in respect of the goods at issue, in view of the absolute ground for refusal referred to in Article 7(1)(b) of Regulation 2017/1001.

21 In those circumstances, in accordance with the case-law cited in paragraph 16 above, it must be held that the applicant has in part withdrawn its actions.

22 Following its partial withdrawal in the present actions, the applicant raises a single plea in law, alleging infringement of Article 7(1)(b) of Regulation 2017/1001.

23 By its single plea, the applicant complains, in essence, that the Board of Appeal erred in finding that the marks applied for were devoid of any distinctive character in relation to the goods at issue.

25 Under Article 7(1)(b) of Regulation 2017/1001, trade marks which are devoid of any distinctive character are not to be registered.

26 For a trade mark to possess distinctive character for the purposes of Article 7(1)(b) of Regulation 2017/1001, it must serve 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, to that effect, judgments of 29 April 2004, Henkel v OHIM, C‑456/01 P and C‑457/01 P, EU:C:2004:258, paragraph 34, and of 11 July 2013, Think Schuhwerk v OHIM (Red shoelace end caps), T‑208/12, not published, EU:T:2013:376, paragraph 31).

27 That distinctive character must be assessed, first, by reference to the goods or services in respect of which registration has been applied for and, secondly, by reference to the perception of them by the relevant public (judgments of 29 April 2004, Henkel v OHIM, C‑456/01 P and C‑457/01 P, EU:C:2004:258, paragraph 35, and of 22 June 2006, Storck v OHIM, C‑25/05 P, EU:C:2006:422, paragraph 25).

28 In the present case, in the first place, as regards the relevant public, the Board of Appeal found, in paragraph 98 (Cases T‑361/23 and T‑362/23) and in paragraph 95 (Cases T‑363/23 and T‑364/23) of the contested decisions, that the goods at issue were expensive goods intended for professionals in the agricultural sector with a high level of attention. Furthermore, in view of the fact that the marks applied for did not contain any word element, the Board of Appeal examined their distinctive character from the point of view of the relevant public throughout the European Union.

29 That finding of the Board of Appeal is not disputed by the applicant, in so far as the applicant itself maintains that the relevant public consists of professionals in the agricultural sector who may be regarded as being very well-informed and attentive.

30 However, the applicant criticises the Board of Appeal for having found, in the assessment of the distinctive character of the marks applied for, in particular, in paragraph 109 (Cases T‑361/23 and T‑362/23) and in paragraph 106 (Cases T‑363/23 and T‑364/23) of the contested decisions, that farmers were ‘relatively attentive’ and that the goods at issue were ‘relatively expensive’. It submits that the case-law resulting from the judgment of 26 October 2022, Lemken v EUIPO (Shade of sky blue) (T‑621/21, not published, EU:T:2022:676, paragraph 49), which is cited in that regard by the Board of Appeal, is not applicable in the present case.

31 In that respect, it should be noted that, in paragraph 49 of the judgment of 26 October 2022, Shade of sky blue (T‑621/21, not published, EU:T:2022:676), the application of which to the circumstances of the present case is disputed by the applicant, the Court, by stating that farmers were ‘relatively attentive’ as regards ‘relatively expensive’ goods, was called upon to rule on the common characteristics of the market for a number of goods, namely, in essence, different types of agricultural machinery and instruments and their parts and accessories. Those goods are, as is maintained by EUIPO, comparable to the goods in the present case, with the result that there is no reason to take the view that the characteristics identified by the Court in the abovementioned judgment are not applicable to the market for the goods at issue. Accordingly, the applicant cannot validly claim that the abovementioned case-law cannot be transposed to the present case.

32 Furthermore, it must be held that the claims that, first, farmers are ‘relatively’ attentive and, secondly, the goods at issue are ‘relatively’ expensive, as set out in paragraph 109 (Cases T‑361/23 and T‑362/23) and in paragraph 106 (Cases T‑363/23 and T‑364/23) of the contested decisions, must be regarded as meaning, in any event, that farmers are attentive and that the goods at issue are expensive. Although those claims lack precision as regards the level of attention of the relevant public, they cannot be regarded as contradicting the Board of Appeal’s findings concerning the high level of attention of the relevant public.

33 In addition, it must be observed that the applicant’s arguments relating to the assessment of the data contained in the affidavit of the Verband Deutscher Maschinen- und Anlagenbau eV (Association of the Engineering Industry, Germany) (‘the VDMA affidavit’) concern, rather, the assessment of the perception of the marks applied for by the relevant public, with the result that they will be examined in the context of that assessment.

34 In the second place, as regards the perception of the marks applied for by the relevant public, the Board of Appeal found that the combination of the colours red, yellow and black was merely a simple variant of the colour combinations used in the agricultural sector which, moreover, had a functional purpose, namely that of safety or signalling. It concluded that, as regards the goods at issue, the marks applied for could not be perceived by the relevant public as an indicator of commercial origin, with the result that they were inherently devoid of any distinctive character, under Article 7(1)(b) of Regulation 2017/1001.

35 In that regard, first, the applicant complains that the Board of Appeal assessed the distinctive character of the marks applied for by referring to case-law which, in its view, was not relevant to the present case. In essence, the applicant submits that certain judgments cited by the Board of Appeal (in particular, the judgments of 6 May 2003, Libertel, C‑104/01, EU:C:2003:244, of 3 May 2017, Enercon v EUIPO – Gamesa Eólica (Blended shades of green), T‑36/16, not published, EU:T:2017:295, and of 29 July 2019, Red Bull v EUIPO, C‑124/18 P, EU:C:2019:641) concern colour marks, but not position marks, as is the case here.

36 It is apparent from the case-law, established, in particular, in the context of the assessment of distinctive character for the purposes of Article 7(1)(b) of Regulation 2017/1001, that, contrary to what the applicant claims, the case-law relating to colour marks and colour combination marks can be applied to colour position marks (judgment of 6 September 2023, Groz-Beckert v EUIPO (Position of the colours white, red and dark green on cuboid packaging), T‑276/22, not published, EU:T:2023:497, paragraph 18). Thus, as is contended by EUIPO, it must be held that the general principles relating to the assessment of the distinctive character of colour marks are also applicable where, as in the present case, it is necessary to assess the distinctive character of position marks consisting, inter alia, of the position of a combination of colours.

37 Therefore, contrary to what the applicant claims, in the present cases, the Board of Appeal was fully entitled to emphasise the importance of a public interest in not unduly restricting the availability of colours for the other operators who offer for sale goods or services of the same type as those in respect of which registration is sought (see, to that effect, judgments of 6 May 2003, Libertel, C‑104/01, EU:C:2003:244, paragraph 55, and of 29 July 2019, Red Bull v EUIPO, C‑124/18 P, EU:C:2019:641, paragraph 65).

38 Furthermore, the Board of Appeal correctly took into account the case-law according to which, save in exceptional circumstances, in particular, where the number of goods or services in respect of which the mark is applied for is very limited and the relevant market very specific, colours do not initially have distinctive character, but may be capable of acquiring such character as the result of the use made of them in relation to the goods or services covered by the EU trade mark application (see, to that effect, judgment of 3 May 2017, Blended shades of green, T‑36/16, not published, EU:T:2017:295, paragraph 31 and the case-law cited).

39 It is therefore in the light of those considerations that the legality of the contested decisions must be reviewed in so far as the Board of Appeal found that the marks applied for lacked distinctive character in relation to the goods at issue.

40 Secondly, the applicant complains that the Board of Appeal did not take sufficient account, for the purpose of assessing the distinctive character of the marks applied for, of the established practice of using colours as position marks on agricultural equipment and of the fact that the relevant public consisting of farmers is aware of that practice. According to the applicant, those circumstances make it possible to confirm the distinctive character of the marks applied for.

41 As a preliminary point, it should be noted that, as was found by the Board of Appeal, the marks applied for are position marks consisting of the colours red, yellow and black, which are intended to be affixed to or placed on the goods at issue, as indicated in the representations of the marks applied for in the applications for registration concerned.

42 As regards the question whether colours or combinations of colours are capable of distinguishing the goods or services of one undertaking from those of other undertakings, it must be determined whether or not those colours or combinations of colours are capable of conveying specific information, particularly as regards the origin of a product or service (see judgment of 6 September 2023, Position of the colours white, red and dark green on cuboid packaging, T‑276/22, not published, EU:T:2023:497, paragraph 19 and the case-law cited).

43 In that regard, it should be borne in mind that, whilst colours are capable of conveying certain associations of ideas, and of arousing feelings, they possess little inherent capacity for communicating specific information, especially since they are commonly and widely used, because of their appeal, in order to advertise and market goods or services, without any specific message (see judgment of 6 September 2023, Position of the colours white, red and dark green on cuboid packaging, T‑276/22, not published, EU:T:2023:497, paragraph 20 and the case-law cited).

44 It is apparent from the grounds of the contested decisions that, in its assessment of the distinctive character of the marks applied for, the Board of Appeal took into account, inter alia, the VDMA affidavit submitted by the applicant. It stated that, in accordance with that affidavit, it was common and established practice for manufacturers of agricultural equipment in Europe that those manufacturers used specific colour patterns affixed to their agricultural equipment. The Board of Appeal also stated that that practice was known to the relevant public consisting of farmers.

45 However, the Board of Appeal correctly found that, notwithstanding the particulars referred to in paragraph 44 above, the VDMA affidavit did not provide any precise indication as to the way in which the relevant public perceived, in the present case, the inherent qualities of the colours of the marks applied for, as positioned on the contested goods. According to the case-law, such an affidavit cannot be regarded as decisive for the purpose of establishing distinctive character (see, to that effect, judgment of 26 October 2022, Shade of sky blue, T‑621/21, not published, EU:T:2022:676, paragraph 37).

46 In addition, contrary to what the applicant appears to claim, that precise indication is also not provided by mere examples of use of colours on agricultural equipment by other manufacturers in Europe, as provided by the applicant before EUIPO.

47 In the light of the case-law cited in paragraphs 42 and 43 above, neither the content of the VDMA affidavit on established practice in the agricultural sector nor those examples of use of colours on agricultural equipment show that the marks applied for are capable of conveying precise information, in particular, as regards the origin of the goods at issue.

48 Thus, in its examination, the Board of Appeal duly took into account both the fact that, within the agricultural sector, there was a practice of using colours as position marks and the fact that that practice was known to the relevant public. The arguments put forward by the applicant in that regard cannot therefore succeed.

49 Thirdly, the applicant criticises the Board of Appeal, in essence, for regarding the common use of the colours red, yellow and black on agricultural machines as an important factor for a finding that the marks applied for lacked distinctive character. In that regard, it notes, once again, that the examples of use of those colours in the agricultural sector confirm the established practice of using colour position marks for agricultural equipment and therefore the fact that they function well for all market participants and can thus co-exist.

50 In that respect, it should be noted that the Board of Appeal correctly found that the specific shades of the colours red, yellow and black, as mentioned in the descriptions of the marks applied for, will be perceived as being the basic colours red, yellow or black. It found, in particular, in the light of the case-law, that those colours had a widespread use in relation to goods and services in many sectors and could also serve security purposes (see, in that regard, judgments of 12 November 2010, Deutsche Bahn v OHIM (Horizontal combination of the colours grey and red), T‑404/09, not published, EU:T:2010:466, paragraph 34, and of 10 September 2015, EE v OHIM (Representation of white dots on a yellow background), T‑143/14, not published, EU:T:2015:616, paragraph 72).

51 In order to assess the perception of those colours within the agricultural sector, the Board of Appeal found, referring, in particular, to the evidence produced by the applicant, that the examples of use of those colours on agricultural machines showed that the colours red and black were rather common in that sector, whereas the colour yellow was not unusual in that sector either. In addition, the Board of Appeal stated that, in accordance with the case-law, the colour yellow was common to, inter alia, certain goods related to the agricultural sector (see, to that effect, judgment of 27 September 2018, Demp v EUIPO (Combination of the colours yellow and grey), T‑595/17, not published, EU:T:2018:609, paragraph 60).

52 It is therefore apparent from the grounds of the contested decisions that, as is contended by EUIPO, the Board of Appeal sought, by the examples of use of the colours concerned on different manufacturers’ agricultural machinery, to illustrate the fact that those colours and their combinations were not unusual in the agricultural sector.

53 The case-law confirms that the fact that the colours of which the mark consists are customary for the goods or services claimed by that mark is relevant because, in such a case, they are less capable of indicating the origin of the goods or services covered by the mark applied for (see, to that effect, judgment of 27 September 2018, Combination of the colours yellow and grey, T‑595/17, not published, EU:T:2018:609, paragraph 60). Furthermore, the Court has already held that, where registration of a sign confers on its proprietor a monopoly on a combination of colours common in the sector concerned, the mark applied for is regarded as being devoid of any distinctive character (see, to that effect, judgment of 12 November 2010, Horizontal combination of the colours grey and red, T‑404/09, not published, EU:T:2010:466, paragraphs 36 and 37).

54 Accordingly, the applicant’s arguments as to the irrelevance of the common use, in the agricultural sector, of the colours concerned and their combinations for the purpose of concluding that the marks applied for lack distinctive character must be rejected.

55 Fourthly, the applicant disputes the Board of Appeal’s findings that the combination of the colours red, yellow and black, contained in the marks applied for, also serves a safety or signalling function.

56 In that regard, the Board of Appeal found that the signalling effect of the colours red and yellow was of particular importance for the goods at issue, for example at the time when they were used in accordance with their purpose, when they were ‘parked’ or ‘on the road’. It stated that although the colour yellow was more easily perceived in low-light conditions, the colour red was particularly eye-catching during the day and was frequently used for safety purposes on all types of equipment in various sectors, including the agricultural sector. Furthermore, according to the Board of Appeal, the colour black, combined with the colour yellow, creates a contrast and thus improves visibility. As regards the safety function, the Board of Appeal also took into account the presence, on the goods at issue, of the combination of the colours yellow and black in the form of a banal rectangle which further improves visibility. The Board of Appeal found that the combination of the colours red, yellow and black served a safety or signalling function.

57 First of all, according to the applicant, the abovementioned assessment of the Board of Appeal, in so far as it finds the importance of the signalling function of the combination of the colours red, yellow and black, is contrary to the case-law according to which difficulties in establishing distinctiveness which may be associated with certain categories of marks because of their very nature – difficulties which it is legitimate to take into account – do not justify laying down specific criteria supplementing or derogating from application of the criterion of distinctiveness as interpreted in the case-law (judgment of 9 September 2010, OHIM v BORCO-Marken-Import Matthiesen, C‑265/09 P, EU:C:2010:508, paragraph 34).

58 First, the applicant does not explain precisely and clearly how exactly the case-law cited has been disregarded. Secondly, it is apparent from the case-law that the technical functionality of colours, including when they serve a signalling function, is regarded as being a relevant criterion in the assessment of the distinctive character of a sign (see, to that effect, judgment of 12 November 2010, Horizontal combination of the colours grey and red, T‑404/09, not published, EU:T:2010:466, paragraphs 30 to 35). Thus, the Board of Appeal cannot be criticised for having taken into account, in its examination, the signalling function of the marks applied for as an important criterion.

59 Likewise, it should be noted that, even if it is apparent from the case-law referred to by the applicant (see paragraph 57 above) that the Court has recognised that there were certain categories of signs which were less likely prima facie to have distinctive character initially, the Court, nevertheless, has not exempted the trade mark authorities from having to carry out an examination of their distinctive character based on the facts (judgment of 9 September 2010, OHIM v BORCO-Marken-Import Matthiesen, C‑265/09 P, EU:C:2010:508, paragraph 37). It is apparent from the Board of Appeal’s analysis, as summarised in paragraph 56 above, that it did in fact carry out an assessment of whether the marks applied for were capable of distinguishing the goods at issue in the context of an examination, based on the facts, focusing on those goods.

60 Next, according to the applicant, the colour red will not be associated with a signalling effect, given the usual practice, known to consumers, of using that colour as a position mark in the agricultural sector. In that regard, it must be held that, even though it is true that the use of the colour red, as a position mark, is not unusual in the agricultural sector, that fact, in itself, does not preclude that colour, used on the goods at issue as a position mark, serving, inter alia, the technical function of signalling.

61 Likewise, it must be held, as the Board of Appeal found, that the applicant’s arguments regarding the existence of specific markings which serve safety purposes are also irrelevant. Although that statement is correct, it cannot affect the Board of Appeal’s findings regarding the safety and signalling function of the combination of the colours red, yellow and black, as affixed to the goods at issue.

62 Moreover, the applicant submits that the marks applied for contain a distinctive graphic element, in particular, a ‘black and yellow ribbon’, which was incorrectly dismissed by the Board of Appeal as being a ‘banal rectangle … commonly used as reflector’.

63 In that respect, it should be noted that, contrary to what the applicant claims, the Board of Appeal did not find, in the contested decisions, that that element, consisting of a combination of the colours yellow and black, is ‘commonly used as reflector’, with the result that the arguments put forward in that regard by the applicant have no factual basis. By contrast, the Board of Appeal correctly found that it was a combination of the colours yellow and black presented in the shape of a banal rectangle which could also contribute to a better visibility of the goods at issue. Such an element, in view, in particular, of its banal and unremarkable nature, cannot be regarded as capable of conveying precise information, in particular, as regards the origin of the goods at issue. Thus, the applicant’s arguments regarding the distinctive character of that element must be rejected.

64 Lastly, the applicant complains that the Board of Appeal infringed the rules governing the burden of proof, in that it relied solely on conjecture and not on well-known facts in order to conclude that the combination of the colours concerned had a signalling function.

65 It should be borne in mind in that regard that whilst it is in principle the task of EUIPO’s examiners and, on appeal, of the Boards of Appeal of EUIPO to establish in their decisions the accuracy of the facts, such is not the case where they allege facts which are well known (judgment of 19 April 2007, OHIM v Celltech, C‑273/05 P, EU:C:2007:224, paragraph 39).

66 Facts which are well known are those which are likely to be known by anyone or which may be learnt from generally accessible sources (judgments of 22 June 2004, Ruiz-Picasso and Others v OHIM – DaimlerChrysler (PICARO), T‑185/02, EU:T:2004:189, paragraph 29, and of 20 April 2005, Atomic Austria v OHIM – Fabricas Agrupadas de Muñecas de Onil (ATOMIC BLITZ), T‑318/03, EU:T:2005:136, paragraph 35).

67 It is also apparent from the case-law that the Board of Appeal may lawfully find that there is no distinctive character from a legal point of view by relying on well-known facts arising from practical experience generally acquired from the marketing of general consumer goods, without it being necessary to provide specific examples (see judgment of 10 December 2015, Fútbol Club Barcelona v OHIM (Representation of the outline of a crest), T‑615/14, not published, EU:T:2015:952, paragraph 31 and the case-law cited).

68 Contrary to what the applicant claims, it must be held that the Board of Appeal’s assessments, as summarised in paragraph 56 above, are based on an understanding, by the relevant public, which may be regarded as being a well-known fact. The Board of Appeal referred only to circumstances which are likely to be known by anyone or which may be learnt from generally accessible sources. More specifically, it is generally accepted that the colours red and yellow, by their very nature, are clearly visible and striking and may thus serve safety or signalling purposes. The same applies to the fact that those colours, combined with the colour black, create a contrast and are therefore clearly visible.

69 Accordingly, the Board of Appeal’s assessments are not based on spurious grounds, as is relied on by the applicant, but are based on well-known facts which, in accordance with the case-law cited in paragraphs 65 to 67 above, could be taken into consideration, without specific examples being provided as to their accuracy.

70 Consequently, it must be held that the applicant’s arguments cannot call into question the Board of Appeal’s assessments, as referred to in paragraph 56 above. The Board of Appeal was therefore right to find that the combination of the colours red, yellow and black, as contained in the marks applied for, served, inter alia, a safety or signalling function.

71 Fifthly, the applicant complains that the Board of Appeal did not examine the marks applied for as a whole, as required by the case-law.

72 In that regard, it must be borne in mind that it is true that, as regards the assessment of the distinctive character of a composite sign, that sign must be considered as a whole. However, that does not preclude a preliminary examination of each of its constituent elements (see, to that effect, judgment of 6 September 2023, Position of the colours white, red and dark green on cuboid packaging, T‑276/22, not published, EU:T:2023:497, paragraph 36 and the case-law cited).

73 In the present case, the Board of Appeal examined the various elements of the marks applied for, taking into account, inter alia, the perception by the relevant public of each of the colours contained in the marks applied for, to expressly conclude that ‘the combination’ of the colours red, yellow and black was merely a simple variant of the colour combinations used in the agricultural sector which, moreover, had a functional purpose. It is also apparent from all the grounds of the contested decisions that the Board of Appeal examined that colour combination ‘as affixed’ to the goods at issue, with the result that the specific positioning was duly taken into account by that Board of Appeal.

74 It follows that, contrary to what the applicant claims, the Board of Appeal did not fail to take into consideration the overall impression produced by the marks applied for when examining the perception of the relevant public. The arguments put forward by the applicant in that regard must therefore be rejected.

75 Sixthly, the applicant submits that it is irrelevant that, in addition to its function of indicating origin, a sign serves other functions. As observed by EUIPO, it must be held that that argument is not relevant in the present case, since it has not been established that the marks applied for were capable, by their very nature, of serving the trade mark’s function as an indication of origin.

76 Seventhly, the applicant claims that, in accordance with the case-law resulting from the judgment of 8 October 2020, Aktiebolaget Östgötatrafiken (C‑456/19, EU:C:2020:813), the distinctive character of the marks applied for must be assessed solely by taking into account the perception which the relevant public has of the affixing of those marks to the goods at issue.

77 In that regard, it should be stated that, by that judgment, the Court held that the distinctive character of a sign for which registration as a trade mark in respect of a service was sought, which sign consisted of coloured motifs and which was intended to be affixed exclusively and systematically in a specific manner to a large part of the goods used for the provision of that service, had to be assessed by taking into account the perception of the relevant public of the affixing of that sign to those goods, without it being necessary to examine whether that sign departed significantly from the norm or customs of the economic sector concerned (judgment of 8 October 2020, Aktiebolaget Östgötatrafiken, C‑456/19, EU:C:2020:813, paragraph 44).

78 It should be noted that, in the light of that case-law, first, the Board of Appeal found that, in the present case, there was no need to examine whether the marks applied for departed significantly from the norm or customs of the economic sector concerned. There is no reason to call into question that assessment, which, moreover, is not disputed by the applicant, in particular, in view of the fact that, even without applying the requirement of ‘significant departure’ from the norm or customs of the economic sector concerned, the Board of Appeal found that the marks applied for were devoid of any distinctive character.

79 Secondly, for the purpose of examining the relevant public’s perception of the affixing of the marks applied for to the goods at issue, as referred to in the case-law cited in paragraph 77 above, the Board of Appeal was fully entitled to assess whether the colour combinations, as affixed to the goods at issue, enabled the average consumer, without any possibility of confusion, to distinguish those goods from those of a different origin. In that respect, the Board of Appeal took into consideration a number of factors, such as, inter alia, the common use of the colour combination concerned by the marks applied for and the technical functionality of those colours. In so far as those factors were relevant for assessing the distinctive character of the marks applied for, there is no reason to find that taking them into consideration ran counter to the case-law of the Court of Justice cited in paragraph 77 above.

80 In view of all the foregoing, it must be held that the applicant does not put forward any argument capable of calling into question the Board of Appeal’s findings that the combination of the colours red, yellow and black is merely a simple variant of the colour combinations used in the agricultural sector and, moreover, has a functional purpose. In the light of the circumstances of the present case, the Board of Appeal established to the requisite legal standard that, in the light of the overall impression produced by each of the marks applied for, those marks did not make it possible to identify the commercial origin of the goods at issue, with the result that they were, within the meaning of Article 7(1)(b) of Regulation 2017/1001, devoid of any distinctive character in relation to those goods.

81 Since, in the present case, the applicant has not established an infringement of Article 7(1)(b) of Regulation 2017/1001, the single plea must be rejected and, consequently, its actions must be dismissed, without it being necessary to rule on EUIPO’s arguments, set out in paragraph 28 of its response, that, in essence, the goods at issue could not be distinguished from the broad categories of goods indicated in the applications for registration concerned.

82 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.

83 In the present case, although the applicant has been unsuccessful, EUIPO has applied for the applicant to be ordered to pay the costs only in the event that a hearing is convened. Since no hearing was convened, it is appropriate to order each party to bear its own costs.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Vaderstad v EUIPO (Position d'une combinaison d'elements de presentation) (EU trade mark - Judgment) [2024] EUECJ T-361/23 (11 September 2024) URL: http://www.bailii.org/eu/cases/EUECJ/2024/T36123.html Cite as: EU:T:2024:612, ECLI:EU:T:2024:612, [2024] EUECJ T-361/23

Court of Justice of the European Communities (including Court of First Instance Decisions)