A trade mark must be assessed on the basis of the category of the mark, which category cannot be ‘reclassified’

C-433/17 P

Enercon v EUIPO

Trade marks: Validity

25 Oct 2018

The matter at hand

German energy company Enercon GmbH had applied for a trade mark for wind energy converters and parts therefor, comprising of a 2D image of what looks like the tower of a wind turbine, with at the lower part five shades of green ranging from dark at the bottom to light at one-fifth of the tower, with the remainder of the tower being light grey. In the application form the mark was identified as a ‘colour mark’ and a description of the colours was provided by means of a colour code. Competitor Gamesa Eólica SL, based in Spain, filed an application with the EUIPO for a declaration of invalidity of the mark on the basis that the mark would be devoid of distinctive character.

The matter has made it to the ECJ before (see Gamesa Eólica v Enercon, C‑35/14 P, on a procedural aspect), it has gone back to the EUIPO and then to the General Court and now the ECJ again. The interim score was that the General Court qualified the mark as a colour mark, not as a two-dimensional figurative mark made up of colours, and that this mark was devoid of distinctive character. In reaching this conclusion, the General Court found that the contested mark had to be assessed according to the category as indicated in the application and observed that the upright trapezoidal shape was not part of the subject matter of the protection sought and that that element served merely to indicate how the colours are to be applied on the goods at issue. Enercon filed an appeal against this judgment before the ECJ.

The judgment of the ECJ

Before the ECJ, Enercon argued that the General Court had erred in law by defining the contested mark as a colour mark containing no figurative elements. According to Enercon, the reason for which the mark was designated in the application as a colour mark was primarily for the administrative convenience of the EUIPO and not for legal reasons. Consequently, in order to determine the nature of the contested mark, the General Court should have had regard not only to the classification of that mark on the form but also to the whole content of the form, in particular the representation of the mark.

The ECJ first explains that the designation of the category of mark for registration of an EU trade mark is a legal requirement (paragraphs 23 and 24). The ECJ emphasizes that Article 43(2) of Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark (which provides for the possibility of certain corrections of the trade mark application such as the contact details of the applicant and obvious mistakes, provided that such correction does not substantially change the trade mark or the goods and services) “does not authorise the category of the mark chosen by the applicant in its application to be changed to another category of mark” (paragraph 25).

The ECJ rules that “If the General Court were required to examine the distinctiveness of a mark applied for, not only in the light of the category chosen by the applicant in its application, but also in the light of all other potentially relevant categories, that applicant’s obligation to indicate the category of mark applied for and the impossibility pursuant to Article 43(2) of [Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark] of subsequently amending that category would be deprived of all practical effect” (paragraph 26).

Therefore, in the assessment of the ECJ, the General Court was entitled to take the view that the distinctive character of the mark had to be assessed according to the category of the mark chosen (paragraph 27).

The appeal is therefore dismissed.

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