the matter at hand
Aktiebolaget Östgötatrafiken applied for the registration of three figurative trade marks for transporting services, each mark with the description ‘colouring of vehicles in the colours red, white and orange’, specifying that these applications do not pertain to the shape of the vehicles. As an explanation of the object of the applications, the applicant provided imagery of the marks as applied to vehicles, with the outline of these vehicles depicted in dotted lines.
The marks were rejected by the Swedish IP Office on the basis of lack of distinctive character. The applicant subsequently filed appeals, up to the referring court, the Svea hovrätt, Patent- och marknadsöverdomstolen (Svea Court of Appeal, Patents and Market Court of Appeal, Stockholm, Sweden).
The referring court raised questions whether, under Article 3(1)(b) of Trade Mark Directive 2008/95Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks, the distinctive character of a sign for a service, which sign consists of a colour motif 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 examining whether that sign departs significantly from the norm or customs of the economic sector concerned.
the judgment of the ecj
Upon answering the preliminary questions, the ECJ first considers that the determining factor is whether the systematically arranged colour combinations are capable of conferring inherent distinctive character on the sign in question. This condition is met if these combinations allow the average consumer to distinguish, without any confusion, between the transport services provided by the undertaking and those of others (paragraph 37), i.e., the normal criteria for distinctive character.
The ECJ then goes on to address the question of whether such a sign must depart significantly from the norm or customs of the sector, by considering that this is not necessary (paragraph 39). The ECJ in this regard refers to its own case-law where it had held that the criterion of a significant departure from the norm or customs of the economic sector exists, applies in cases where the sign consists of the shape of the product or its pachaging (e.g., case C-456/01 P, Henkel v OHIM) or when the sign represents the layout of the physical space where the services, subject to the trade mark registration, are provided (case C-421/12, Apple).
It then considers that “such a situation does not arise in a case in which, as in the main proceedings, the signs at issue consist of graphic elements intended to be affixed to goods which are used to provide the services designated by the application for registration” (paragraph 42). In this regard, it notes that “although the goods used for the provision of the services at issue in the main proceedings, namely transport vehicles, are shown in dotted lines in the applications for registration, for the purpose of indicating both the places where the marks applied for are intended to be affixed and the outlines of those marks, the signs in respect of which registration as trade marks is sought are, even so, not indissociable from the shape or packaging of those goods and nor is their purpose to represent the physical space in which the services are provided” (paragraph 43).