Judgments nº T-36/16 of The General Court, May 03, 2017

Resolution DateMay 03, 2017
Issuing OrganizationThe General Court
Decision NumberT-36/16

(EU trade mark - Invalidity proceedings - EU trade mark consisting of blended shades of green - Absolute ground for refusal - No distinctive character - Article 7(1)(b) of Regulation (EC) No 207/2009 - Article 52(1)(a) of Regulation No 207/2009) In Case T-36/16,

Enercon GmbH, established in Aurich (Germany), represented by S. Overhage, R. Böhm and A. Silverleaf, lawyers,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by A. Folliard-Monguiral, acting as Agent,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being

Gamesa Eólica, SL, established in Sarriguren (Spain), represented by A. Sanz Cerralbo, lawyer,

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 28 October 2015 (Case R 597/2015-2), concerning invalidity proceedings between Gamesa Eólica and Enercon,

THE GENERAL COURT (Eighth Chamber),

composed of A.M. Collins, President, R. Barents (Rapporteur) and J. Passer, Judges,

Registrar: M. Marescaux, Administrator,

having regard to the application lodged at the Court Registry on 26 January 2016,

having regard to the response of EUIPO lodged at the Court Registry on 20 April 2016,

having regard to the response of the intervener lodged at the Court Registry on 4 April 2016,

further to the hearing on 12 January 2017,

gives the following

Judgment

Background to the dispute

1 On 21 August 2001, the applicant, Enercon GmbH, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to 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 European Union trade mark (OJ 2009 L 78, p. 1)).

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

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3 The goods in respect of which registration was sought are in Class 7 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, as revised and amended, and correspond to the following description: ‘Wind energy converters, and parts therefor’.

4 The contested mark, reproduced in paragraph 2 above, is identified in the application form as a ‘colour mark’. A description of the colours applied for was provided by means of a colour code.

5 The EU trade mark application was published in Community Trade Marks Bulletin No 54/2002 of 8 July 2002 and was registered on 30 January 2003.

6 On 26 March 2009 the other party to the proceedings, Gamesa Eólica SL, filed an application for a declaration of invalidity against the EU trade mark on the basis of Article 51(1)(a) and (b) of Regulation No 40/94 (now Article 52(1)(a) and (b) of Regulation No 207/2009).

7 By decision of 8 December 2010, the Cancellation Division granted the application for a declaration of invalidity on the basis of Article 7(1)(b) of Regulation No 207/2009. With regard, in particular, to the nature of the contested mark, the Cancellation Division considered, in essence, that the mark defined the way in which the registered colours could be applied to a wind turbine tower.

8 On 28 January 2011, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the Cancellation Division’s decision.

9 By decision of 1 March 2012 (‘the first decision’), the First Board of Appeal of EUIPO annulled the decision of the Cancellation Division. First, it held that the contested mark comprised 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 had sufficient distinctive character, since it represented neither a wind turbine tower nor a colour mark. Third, the Board considered that the contested mark was not descriptive and that Article 7(1)(e)(ii) of Regulation No 207/2009 was not applicable in the case, because the contested mark was neither a colour mark nor a three-dimensional wind turbine. Fourth, it held that there was no evidence that the contested mark, as re-categorised, had been applied for in bad faith, inasmuch as that mark could not prevent competitors from complying with national administrative rules. In that regard, the Cancellation Division had based its arguments, inter alia, on the fact that the colour green, or a blend of several shades of green, could not be registered in respect of wind turbine towers, since an EU mark should not hinder the application of national legislation intended to limit the visual impact of wind turbines or, on the other hand, with regard to their upper part, to ensure that the wind turbines should be visible to aircraft.

Procedure before the General Court and the Court of Justice

10 By application lodged at the Registry of the General Court on 4 June 2012, Gamesa Eólica brought an action for annulment of the first decision. Enercon did not participate in the proceedings before the General Court within the meaning of Article 134(1) of the 1991 Rules of Procedure; it was therefore not an intervener in the proceedings before the General Court.

11 Gamesa Eólica put forward three pleas in law in support of its action. The first plea in law alleged infringement of Article 7(1)(b) of Regulation No 207/2009, on the grounds that the First Board of Appeal of EUIPO had wrongly re-categorised the contested mark as a figurative mark when it had been registered as a colour mark and had considered that the contested mark had distinctive character. The second plea in law alleged infringement of Article 62 of Regulation No 207/2009 and of the principle of functional continuity. The third plea in law alleged infringement of Article 52(1)(b) of Regulation No 207/2009, in that the Board of Appeal had failed to take account of the bad faith demonstrated by Enercon in filing its application for registration of the contested mark.

12 After rejecting the second plea in law put forward by Gamesa Eólica, the General Court, in its judgment of 12 November 2013, Gamesa Eólica v EUIPO - Enercon(Blended shades of green) (T-245/12, not published, EU:T:2013:588, ‘the first judgment of the General Court’), annulled the first decision, upholding the first plea in law, on the ground that the First Board of Appeal had based its decision on a mistaken perception of the nature and characteristics of the contested mark and had made an error of assessment in finding that the contested mark was not a colour mark, but rather a two-dimensional figurative mark made up of colours. Having found that an error of assessment had been made concerning the nature of the contested mark at issue, the General Court did not go on to examine whether the mark had any distinctive character.

13 The applicant appealed against that judgment by document lodged at the Registry of the Court of Justice on 22 January 2014.

14 Since the applicant had not lodged any submissions before the General Court, the Court of Justice held that it had not participated in the proceedings at first instance. Therefore, since it had not been an intervener before the General Court, the applicant could not bring an appeal...

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