In a case concerning colour combination trade mark applications for vehicles and transport services in Class 39, the CJEU provided guidance on the assessment of distinctive character. It said that colour combinations can become distinctive through use, and it is not necessary to examiner whether they depart significantly from the norm or customs of the economic sector concerned (contrary to shape marks).
It answered the questions referred from the Svea Court of Appeal in Sweden, saying that Article 3(b) of the 2008 Directive (corresponding to Article 4(b) of the 2015 Directive) must be interpreted as meaning that "the distinctive character of a sign for which registration as a trade mark in respect of a service is sought, which sign is composed of coloured motifs and which is 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, must 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 departs significantly from the norm or customs of the economic sector concerned".
In this case, the Court said, the signs "consist of colour compositions which are systematically arranged and spatially limited. Those applications for registration thus relate to clearly defined graphic elements which - are not intended to represent goods or an area for the provision of services by the mere reproduction of the lines and the contours thereof".
The judgment is in Case C-456/19 Aktiebolaget Östgötatrafiken v Patent- och registreringsverket.
Joined Cases C-720/18 and C-721/18, Ferrari SpA v DU, referred from Germany, concerned whether use of the TESTAROSSA figurative mark for replacement parts and services constitutes genuine use.
The Court ruled that Articles 12(1) and 13 of the 2008 must be interpreted as meaning that "a trade mark registered in respect of a category of goods and replacement parts thereof must be regarded as having been put to 'genuine use' within the meaning of Article 12(1), in connection with all the goods in that category and the replacement parts thereof, if it has been so used only in respect of some of those goods, such as high-priced luxury sports cars, or only in respect of replacement parts or accessories of some of those goods, unless it is apparent from the relevant facts and evidence that a consumer who wishes to purchase those goods will perceive them as an independent subcategory of the category of goods in respect of which the mark concerned was registered".
It added that a trade mark is capable of being put to genuine use by its proprietor when that proprietor resells second-hand goods put on the market under that mark, and that a trade mark is put to genuine use by its proprietor where that proprietor provides certain services connected with the goods previously sold under that mark, on condition that those services are provided under that mark.
In the case involving an EU trade mark application filed by the footballer Lionel Messi, the Court of Justice of the EU upheld a General Court judgment that Messi's reputation counteracted the visual and phonetic similarities between his application for a figurative sign (pictured) and the pre-existing trade mark registration for MASSI (Joined Cases C-449/18 P and C-474/18 P EUIPO v Messi Cuccittini and C-474/18 P J.M.-E.V. e hijos v Messi Cuccittini).
The decision, published in September, is notable in that the Court said that the reputation of the person applying for his name to be registered is one of the relevant factors in the likelihood of confusion assessment. In this case, the General Court had found that Messi's reputation was one factor in establishing a conceptual difference between 'messi' and 'massi'. Moreover, Massi's reputation was a well-known fact, and should have been taken into account by EUIPO.