Judgments nº T-378/07 of The General Court, September 29, 2010

• Resolution Date: September 29, 2010
• Issuing Organization: The General Court
• Decision Number: T-378/07

In Case T‑378/07,

CNH Global NV, established in Amsterdam (Netherlands), represented by M. Edenborough, Barrister, and R. Harrison, Solicitor,

applicant,

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Folliard-Monguiral, acting as Agent,

defendant,

ACTION against the decision of the First Board of Appeal of OHIM of 5 July 2007 (Case R 1642/2006-1), relating to an application for registration as a Community trade mark of a sign representing a tractor in red, black and grey,

THE GENERAL COURT (Second Chamber),

composed of I. Pelikánová, President, K. Jürimäe and S. Soldevila Fragoso (Rapporteur), Judges,

Registrar: K. Pocheć,

having regard to the application lodged at the Registry of the General Court on 2 October 2007,

having regard to the response lodged at the Court Registry on 15 January 2008,

having regard to the reply lodged at the Court Registry on 13 May 2008,

further to the hearing on 17 March 2010,

gives the following

Judgment

Background to the dispute

1 On 15 July 2004, the applicant, CNH Global NV, filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).

2 Registration as a trade mark was sought for the following figurative sign:

3 The sign at issue is described as ‘[a] combination of the colours red, black and grey as applied to the exterior surfaces of a tractor, namely red as applied to the bonnet, roof and wheel arches, light and dark grey as applied to the bonnet in a horizontal stripe and black as applied to the front bonnet grill, chassis and vertical trim’.

4 The goods in respect of which registration was sought are in Class 12 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘tractors’.

5 On 27 October 2006, the examiner rejected the application for registration on the ground that, even though the applicant had shown it had ‘outstanding’ sales figures in the Member States in Western Europe, it had failed to prove extensive use of the sign in the new Member States, which are mainly agricultural and that, consequently, the acquisition, by the mark applied for, of distinctive character through use in a substantial part of the European Community could not be established.

6 On 15 December 2006, the applicant filed an appeal against the examiner’s decision. By decision of 5 July 2007 (‘the contested decision’), the First Board of Appeal dismissed the appeal and confirmed the examiner’s decision.

7 In essence, the Board of Appeal stated, first, that the relevant public was made up of farmers and, secondly, that, as the combination of colours at issue lacked inherent distinctive character, the mark applied for could be registered only on condition that it had acquired distinctive character through use in a substantial part of the Community. The Board of Appeal found that the applicant had not proved that that condition was satisfied because, first, it had not taken account of the new Member States in the definition of the relevant market and, secondly, the sales figures in those Member States, or even in some of the older Member States, were clearly insufficient to show intensive use of that sign.

Forms of order sought

8 The applicant claims that the Court should:

– annul the contested decision;

– order OHIM to pay the costs.

9 OHIM contends that the Court should:

– dismiss the action;

– order the applicant to pay the costs.

Law

10 The applicant raises essentially a single plea in law in support of its action, alleging infringement of Article 7(3) of Regulation No 40/94 (now Article 7(3) of Regulation No 207/2009).

Arguments of the parties

11 The applicant submits that the relevant public, which represents a very small percentage of the population as a whole, will perceive the combination of colours of the tractors which it manufactures as a trade mark and that it will do so in the same way in the various Member States.

12 The applicant takes the view that the relevant public includes present owners and prospective purchasers of tractors, but not those who are simply potentially interested in those goods, because only the first group has a real interest in the mark performing its essential function of identifying the commercial origin of the goods.

13 According to the applicant, the term ‘farmer’ should not be taken into account with a view to defining the relevant public, because it is imprecise and includes irrelevant persons, such as smallholders and farmers who do not have the means to purchase a tractor. Accordingly, the Board of Appeal was wrong to consider farmers in general to be the relevant public, and that error led it to misinterpret the evidence submitted.

14 The applicant therefore disputes OHIM’s statement that the relevant public consists of farmers in general.

15 The applicant maintains that, according to the case-law, the distinctiveness of a mark acquired through use must be shown for a significant part of the public concerned, but not for that public as a whole. In addition, such proof has to be adduced as regards a substantial part of the relevant territory, but not the whole of that territory, because, contrary to OHIM’s submission, there has been no change in case-law or legislation to that effect.

16 The applicant states, furthermore, that the view of OHIM that the acquisition by a trade mark of distinctiveness through use must be established for the whole territory of each Member State and for all members of the relevant public is ‘unworkable’.

17 According to the applicant, the distribution of the relevant public is not uniform throughout all Member States and the level of appropriate use therefore changes in light of the particular conditions prevailing in each Member State.

18 The applicant submits that, in the present case, the absolute number of sales of the goods concerned, the geographical area covered, and the fact that sales are not uniformly distributed throughout the Community are not relevant for proving that the mark applied for has acquired distinctiveness through use...