In Case T-245/12, Enercon GmbH registered the CTM (represented right), described as a “colour mark” in the application form (description of the colours was provided by means of colour codes), for Class 7 goods “wind energy converters and parts therof”
Gamesa Eolica SL (Spain) filed a declaration for invalidity on the basis of Article 51(1)(a) and (b) CTMR.
The cancellation Division granted it on the grounds of Art. 7 (1) b) CTMR and held in essence, that the mark defined the way in which the registered colours may cover a wind turbine tower.
The Board of Appeal of OHIM annulled the decision of the Cancellation Division. It held that the contested mark was composed of a figurative sign consisting of a two-dimensional shape made up of colours, and not a colour mark. Second, it considered that the contested mark was of sufficiently distinctive character since it represented neither a wind turbine tower nor a colour mark. Third, the contested mark was not descriptive and that Article7(1)(e)(ii) of CTMR was not applicable because the contested mark was not a colour mark or a three-dimensional wind turbine. Fourth, there was no evidence that the contested mark, as re-categorised, had been applied for in bad faith since that mark cannot prevent competitors from complying with national administrative rules. In that regard, the CD had considered that the colour green, or a blend of several shades of green, cannot be registered in respect of wind turbine towers, since a CTM should not hinder the application of national legislation intended to limit the visual impact of wind turbines or, with regard to their upper part, to ensure that the wind turbines should be visible to aircraft.
The General Court annulled the BoA’s decision because it assessed wrongly the categorization of the contested mark which is sufficient to vitiate the entirety of the assessment, in particular for the following reasons:
First, a description of the mark can only be complementary and can not, in any event, be a substitute for the representation thereof. The Board of Appeal found, in paragraph 16 of the contested decision, that the applicant had registered a colour mark, indicating colour codes in order to clarify the colours used in the sign but not including a verbal description of the sign, thus concluding this was not a colour mark per se, but a 2D figurative mark.
However, it is clear from both the application form and the acknowledgment of receipt of the application for registration sent by OHIM to the applicant, that the contested mark was registered as a colour mark.None of the parties has challenged the nature of the contested mark as a colour mark, at any stage in the proceedings.
By contrast, the question whether the contested mark was a colour mark per se, that is to say, in the present case, a combination of colours, not spatially defined, or rather a colour mark defining the way in which blended shades of colours would be applied on the goods concerned, was argued, in particular during the proceedings before the BoA.
The GC found that neither the case-law nor any provision of the CTMR requires a CTM applicant to explain the way in which the combination of colours would be applied to wind turbine towers (as permissible by Rule 3 (3) CTIMR). Other applications filed by Enercon containing more details, are irrelevant. Finally, the use of dotted lines is not obligatory and OHIM submitted at the hearing that harmonisation of practice in that regard was desirable.