In Case T-293/10, The applicant, Seven Towns Ltd, filed an application for registration of the following CTM as “color mark per se” for goods in Class 28 namely “Toys, games, playthings and jigsaw puzzles, three dimensional puzzles, electronic games; hand-held electronic games”.

The applicant also provided the following description:

‘Six surfaces being geometrically arranged in three pairs of parallel surfaces, with each pair being arranged perpendicularly to the other two pairs characterised by: (i) any two adjacent surfaces having different colours and (ii) each such surface having a grid structure formed by black borders dividing the surface into nine equal segments.’

The OHIM examiner rejected the application on the ground that the representation of the mark applied for did not satisfy the requirements set out in Article 4 CTMR because there was a discrepancy between the graphic representation and the description of the mark. The examiner also observed that the sign at issue does not represent a combination of colours per se, but a juxtaposition of coloured squares characterised by a particular size, form and order and that the mark must be deemed to be a figurative mark and not a colour mark.

According to case-law, a colour per se implies that it is not spatially delimited. In order to constitute a mark, a sign must be able to be represented graphically, particularly by means of images, lines or characters, and the representation must be clear, precise, self-contained, easily accessible, intelligible, durable and objective (Case C‑273/00 Sieckmann). Accordingly, a graphic representation consisting of two or more colours, designated in the abstract and without contours, must be systematically arranged by associating the colours concerned in a predetermined and uniform way.

The First Board of Appeal also rejected the CTM application because it did not conform to the requirements of Article 4 CTMR (this article provides for an absolute ground for refusal and can be assessed at any time during the registration procedure).

The applicant submitted before the General Court that the BoA adopted a misconceived test in the contested decision, where it stated that the test ‘is whether a reasonably observant person with normal levels of perception and intelligence would, upon consulting the CTM register, be able to understand precisely what the mark consists of, without expending a huge amount of intellectual energy and imagination’.

According to the applicant, any person with basic notions of geometry should understand that a surface having a grid structure formed by black borders dividing the surface into nine equal segments is a 3x3 square surface. Three pairs of square surfaces are six square surfaces, etc. Moreover, it is clearly stated how the colour black is arranged in relation to the other ‘real’ colours. Thus the description is self-contained, complete and coherent in the sense of being clear, precise and intelligible.

Consequently, the applicant claimed that the aforementioned test was wrongly applied by the BoA, as is shown by the following demonstration:

Six surfaces being geometrically arranged in three pairs of parallel surfaces, with each pair being arranged perpendicularly to the other two pairs

characterised by

(i) any two adjacent surfaces having different colours and

(ii) each such surface having a grid structure formed by black borders dividing the surface into nine equal segments

The General Court dismissed the appeal and found that the BoA was right to state with regard to the description of the CTM applied for, that it is necessary to expend a ‘huge amount of intellectual energy and imagination’ in order to understand with the necessary degree of certainty what sign the applicant wishes to protect as a colour mark on account of a combination of colours per se. It is not possible to arrive at a cube as the applicant claims, but quite simply a rectangular parallelepiped, which also meets the description provided. It is only if it is stated that all of the faces are squares that it is clearly a cube; the applicant does not give that additional detail in its description.

Further, the BoA correctly observed that it is highly unlikely that anyone would infer from the information set out by the applicant that CTM application had anything to do with the world-famous puzzle known as Rubik’s cube, in respect of which the applicant is the proprietor of a Community 3-D trade mark which was published with a description that is substantially the same as the description set out above.

Consequently, the reason the application for registration of the mark is inadmissible in the present case is not so much the failure to represent one of the individual elements of the sign in accordance with Rule 3 of CTMR, as the wrong, unclear and contradictory way in which those elements have been referred to and combined, as well as the incompatibility of that combination with the concept of a colour mark per se. The Board of Appeal was therefore right to find that the overall description of the mark was ambiguous and contradictory.