Opinion of Advocate General Léger delivered on 12 November 2002/
Grade B
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Not the law itself: Opinion
Address https://gelex.eu/eli/EU/opinion/62001C0104@2002-11-12/en
1. Can a colour per se, not having any shape or contour, constitute a trade mark within the meaning of the First Council Directive 89/104/EEC, for certain goods or services, and, if so, under what conditions? Those are in essence the questions put by the Hoge Raad der Nederlanden (High Court, Netherlands), in the present case.
sec_1 I —
Legal background
2. The relevant legal background comprises the Paris Convention for the Protection of Industrial Property, Community legislation and the Uniform Benelux Law on Trade Marks.
sec_1 A —
The Paris Convention
3. The Paris Convention, to which all Member States have acceded, is the text on which all international rules governing industrial property rights are based.
4. It does not contain any definition of signs capable of constituting a trade mark.
5. Article 6 quinquies A provides that every trade mark duly registered in the country of origin shall be accepted for filing and protected as it is in the other countries acceding to the Convention, subject to the reservations indicated in that Article. Article 6 quinqiues B(2) states that trade marks shall be denied registration which are devoid of any distinctive character, or consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, place of origin of the goods, or the time of production, or have become customary in the current language or in bona fide and established trade practices of the country where protection is claimed.
6. According to Article 6 quinquies C, in determining whether a mark is eligible for protection, all the factual circumstances must be taken into consideration, particularly the length of time the mark has been in use.
sec_2 B —
Community legislation
7. The relevant Community legislation comprises the Directive and Council Regulation (EC) No 40/94.
sec_1
1. The Directive
8. The Directive was adopted by the Council in order to eliminate the disparities which exist between the laws of the Member States on trade marks which may distort competition within the common market. Its object is the approximation of provisions and laws which most directly affect the functioning of the internal market. It applies only to trade marks acquired by registration.
9. The Directive therefore prescribes the conditions which apply to the registration of a sign as a trade mark. Article 2 is headed Signs of which a trade mark may consist, and provides that: A trade mark may consist of any sign capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.
10. Article 3 of the Directive, which specifies grounds for refusal or invalidity, reads as follows: ...
10.
1. The following shall not be registered or if registered shall be liable to be declared invalid:
1.
(a) signs which cannot constitute a trade mark;
(b) trade marks which are devoid of any distinctive character;
(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, or the time of production of the goods or of the rendering of the service, or other characteristics of the goods;
(d) trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade;
(e) signs which consist exclusively of: the shape which results from the nature of the goods themselves, or the shape of goods which is necessary to obtain a technical result, or the shape which gives substantial value to the goods;
3. A trade mark shall not be refused registration or be declared invalid in accordance with paragraph 1(b), (c) or (d) if, before the date of application for registration and following the use which has been made of it, it has acquired a distinctive character. Any Member State may in addition provide that this provision shall also apply where the distinctive character was acquired after the date of application for registration or after the date of registration.
11. According to Article 4 of the Directive, a trade mark may also be refused registration, or declared invalid if registered, if it is identical with an earlier trade mark or if there exists a likelihood of confusion with the earlier trade mark, in relation to goods or services identical with or similar to the goods or services for which the earlier trade mark is protected.
12. In order to guarantee the trade mark as an indication of origin, the Directive also specifies the protection to be enjoyed by registered trade marks within the Member States. Article 5 states:
12.
1. The registered trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade:
1.
(a) any sign which is identical with the trade mark in relation to goods or services which are identical with those for which the trade mark is registered;
(b) any sign where, because of its identity with, or similarity to, the trade mark and the identity or similarity of the goods and services covered by the trade mark and the sign, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association between the sign and the trade mark.
2. Any Member State may also provide that the proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade any sign which is identical with, or similar to, the trade mark in relation to goods or services which are not similar to those for which the trade mark is registered, where the latter has a reputation in the Member State and where the use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.
13. However, the Directive does not exclude the application to trade marks of provisions of law of the Member States other than trade mark law, such as the provisions relating to unfair competition, civil liability or consumer protection. Article 5(5) of the Directive accordingly provides that: Paragraphs 1 to 4 shall not affect provisions in any Member State relating to the protection against the use of a sign other than for the purposes of distinguishing goods or services, where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.
14. Registered marks must be used, however, failing which they are subject to revocation. Article 10 of the Directive states that a trade mark shall be subject to revocation if, within a period of five years, the proprietor has not put the trade mark to genuine use. According to Article 10(2)(a), genuine use includes use of the trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered.
sec_2
2. The Regulation
15. As with the Directive, the aim of the Regulation is the removal of barriers to free movement of goods and services and the institution of arrangements which ensure that competition is not distorted. It provides for the creation of a protected trade mark having effect throughout the Member States of the Community, without affecting the trade mark law of those States.
16. The provisions of the Regulation relating to the acquisition of rights in trade marks and their effects are expressed in the same terms as in the Directive. Thus, Article 4 reproduces the provisions of Article 2 of the Directive relating to the signs of which a Community trade mark may consist, Article 7 reproduces those of Article 3 of the Directive relative to the grounds on which registration may be refused, and Article 9 reproduces those of Article 5 of the Directive on the rights conferred by a trade mark. Similarly, a Community trade mark is only protected to the extent that it is used. Article 15 of the Regulation reproduces the provisions of Article 10 of the Directive relating to the use of trade marks.
sec_3 C —
Uniform Benelux law on trade marks
17. The legislation of the three Member States of the Benelux Economic Union on trade marks is set out in in a single act, the Uniform Benelux Law on Marks. This was amended with effect from 1 January 1996 by a Protocol signed in Brussels on 2 December 1992, the purpose of which was to ensure the transposition of the Directive in the three Benelux countries.
18. Article 1 of the BLM states that: The following shall be considered individual marks: designations, designs, prints, seals, letters, numbers, shapes of goods or their getup, and any other symbols which serve to distinguish the goods or services of an enterprise. However, shapes determined by the very nature of the goods or which affect their actual value or produce industrial results cannot be considered marks.
19. Article 6 bis of the BLM provides that: ...
19.
1. The Benelux Trade Mark Office shall refuse to register an application when it considers that:
1.
(a) the sign as filed does not constitute a mark within the meaning of Article 1, particularly due to any lack of distinctive character as provided in Article 6 quinquies B(2) of the Paris Convention;
3. The Benelux Office shall inform the applicant without delay and in writing of its intention to refuse registration in whole or in part, shall state the grounds and shall give him the possibility of responding within a period of time to be laid down in the Rules.
4. If the objections of the Benelux Office to registration have not been lifted within the fixed time-limit, registration of the mark applied for shall be refused in whole or in part. The Benelux Office shall inform the applicant without delay and in writing and state the grounds of refusal and advise of the remedy against such decision referred to in Article 6 ter.
5. Refusal to register a mark in respect of all or some of the products render the application wholly or partially invalid. Such invalidity shall not take effect until the time-limit for appeals referred to in Article 6 1er has expired, without having been used, or until the request to order registration has been irrevocably rejected.
20. Article 6 ter of the BLM reads as no follows: The applicant may, within two months following the communication referred to in Article 6 bis, paragraph 4, file with the Brussels Cour d'Appel, The Hague Gerechtshof or the Luxembourg Cour d'Appel a request for an order to register the mark applied for. The court with territorial competence shall be determined by the address of the applicant, the address of his representative or the postal address given in the application.
sec_2 II —
Facts and procedure
21. On 27 August 1996, Libertel Groep BV applied to the Benelux Trade Mark Office to register the colour orange.
22. In the schedule to the application, the space designated for the representation of the sign was coloured orange. The section intended inter alia for recording the colour of the trade mark was completed with the word Orange..
23. The goods and services to which the application for registration of that colour related were those in classes 9 and 35 to 38 laid down by 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. In the application, Libertei stated that the goods covered byclass 9 comprised telecommunications apparatus. In respect of classes 35 to 38, the application referred to telecommunications services and to the physical, financial and technical management of telecommunications systems.
24. By letter of 21 February 1997, the BTO informed Liberteľs trade mark consultant of its provisional refusal to register the application on the ground that Libertei had failed to show that the colour orange had acquired a distinctive character through use.
25. Libertei lodged observations intended to show that a distinctive character had in fact been acquired.
26. By letter of 10 September 1997, the BTO intimated its decision definitively to refuse to register the application on the grounds that it lacked any distinctive character.
27. Liberteľs appeal against that decision to the Gerechtshof (Regional Court of Appeal) of The Hague was rejected for the same reason.
28. Libertei appealed against the decision of the Gerechtshof of The Hague to the Hoge Raad der Nederlanden.
sec_3 III —
Questions referred for a preliminary ruling
29. By order of 23 February 2001, the Hoge Raad der Nederlanden decided to stay the proceedings and refer the following questions to the Court of Justice for a preliminary ruling:
29.
(1) Is it possible for a single specific colour which is represented as such or is designated by an internationally applied code to acquire a distinctive character for certain goods or services within the meaning of Article 3( 1 )(b) of the Directive?
(2) If the answer to the first question is in the affirmative:
(2)
(a) in what circumstances may it be accepted that a single specific colour possesses a distinctive character in the sense used above?
(b) does it make any difference if registration is sought for a large number of goods and/or services, rather than for a specific product or service, or category of goods or services respectively?
(3) In the assessment of the distinctive character of a specific colour as a trade mark, must account be taken of whether, with regard to that colour, there is a general interest in availability, such as can exist in respect of signs which denote a geographical origin?
(4) When considering the question whether a sign, for which registration as a trade mark is sought, possesses the distinctive character referred to in Article 3(1 )(b) of the Directive, must the Benelux Trade Office confine itself to an assessment in abstracta of distinctive character or must it take account of all the actual facts of the case, including the use made of the sign and the manner in which the sign is used?.
sec_4 IV —
Analysis
sec_1 A —
Subject-matter of the dispute
30. It should be observed that according to the settled case-law of the Court it is solely for the national court before which a dispute has been brought, and which must assume responsibility for the subsequent judicial decision, to determine in the light of the particular circumstances of the case both the need for a preliminary ruling in order to enable it to deliver judgment and the relevance of the questions which it submits to the Court. Nevertheless, the Court takes the view that it is its duty to interpret all provisions of Community law which national courts need in order to decide the actions pending before them, even if those provisions are not expressly indicated in the questions referred to it by those courts.
31. Thus, it provided an interpretation of a measure of secondary legislation in the case of Swaddling, even though the reference related only to the interpretation of certain articles of the EC Treaty.
32. In the present case, the national court has put several questions for a preliminary ruling to the Court relating to Article 3 of the Directive in order to establish under what conditions a colour without any shape or contour may have a distinctive character for certain goods and services.
33. As the Commission has rightly pointed out, in order to consider these questions it is necessary to determine first of all whether a colour per se is a sign capable of constituting a trade mark within the meaning of Article 2 of the Directive.
34. Only those signs which meet the requirements of that article may be registered as a trade mark. Article 3(l)(a) of the Directive confirms that signs which do not meet those requirements are, by definition, incapable of constituting a trade mark.
35. It is therefore necessary to consider whether Article 2 of the Directive should be interpreted as meaning that a colour per se, without any shape or contour, constitutes a sign capable of being represented graphically and of distinguishing the goods and services of one undertaking from those of other undertakings.
sec_2 B —
Arguments of the interveners
36. Libertei, the BTO, the Netherlands Government, the United Kingdom Government, and the Commission are of the opinion that a colour per se may be registered as a trade mark.
37. According to the Commission, a colour, as a visual statement, is by definition capable of being represented graphically. Moreover, a colour may, generally speaking, have a distinctive character. The Commission points out that colours may represent an important part of communications between an undertaking and its customers or consumers; they attract attention, they may have an inherent meaning and provoke certain associations in the beholder.
38. In support of their analysis, the Commission, Libertei and the BTO refer to the joint declaration of the Council of the European Union and the Commission appearing in the minute of the meeting of the Council at which the Directive was adopted. This declaration stated that: the Council and the Commission consider that Article 2 [of the Directive] does not exclude the possibility: of registering as a trade mark a combination of colours or one colour alone... provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.
39. Lastly, the Commission, the United Kingdom Government and the BTO point out that their position is shared by the Office for Harmonisation in the Internal Market (Trade marks and Designs) (OHIM). According to OHIM, a colour per se may, generally speaking, acquire protection as a trade mark by reason of Article 4 of the Regulation since it falls within the meaning of the wording any signs, which should be given the broadest interpretation. It states that to restrict the protection of colour marks to a specific presentation would be contrary to the spirit of Community trade mark law and that a contour or delimitation is not required for the purposes of a graphical representation within the meaning of Article 4 of the Regulation.
sec_3 C —
Analysis
40. Unlike the interveners, I am of the view that Article 2 of the Directive docs not permit a colour without any shape or contour to be registered as a trade mark.
41. It is my opinion that a colour per se does not meet the requirements of this article as, first, it does not constitute a sign capable of being represented graphically and, secondly, it is not capable of distinguishing the goods or services of one undertaking from those of other undertakings.
42. Nevertheless, before considering each of these requirements, it may be useful to give a brief description of certain essential features of the concept of colour.
sec_1
1. The concept of colour
43. Colour is a concept which is intuitively understood by everybody, but which is very difficult to define in a universal manner. It is nevertheless accepted that colour is a sensation. It involves perception by the eye and transmission to the brain of the effects of luminous radiation on matter. Colour is thus not a preexisting objective reality of which we require only to become conscious, such as a film placed over an object. It depends both on the nature and intensity of light, and on the eye of the observer. The colour of an object therefore changes in relation to lighting conditions and the distance from which the object is observed. Its perception also varies depending on the individual seeing it.
44. Colour has been the object of several methods of analysis. Newton, who is thought to have provided the first interpretation of the splitting apart of a combination of light by a prism, set the number of principal colours of the spectrum at seven. Painters distinguish primary colours, namely yellow, red and blue, from which it is possible to produce other colours, which are termed composite. For industrial colour applications, professionals have mapped out different groups of specimens, strictly differentiated using a system of rules which allow a very large number of tonalities to be defined. Nevertheless, the human eye can only distinguish a limited number of shades with certainty. Moreover, the number of particular words used to name colours is even more restricted. The number of colours capable of being identified and described with precision by an observer thus remains extremely limited.
45. Lastly, colour is a language. As it involves a sensation which reflects the appearance of things, it may provoke feelings in the observer. It may also transmit items of information. These feelings and these items of information are purely cultural phenomena. They are based on conventions of a psychological, symbolic, religious or other order which vary from time to time and place to place. In reality however, colour does not exist independently. Being the result of the interaction of luminous radiation and matter, it is always the attribute of something else. So visual memory, which experience tells us is powerful and lasting, is made up of mental representations of the objects which surround us.
46. It is in the light of these observations that the two requirements laid down under Article 2 of the Directive fall to be considered.
sec_2
2. A sign capable of being represented graphically
47. It should be observed that the Court has consistently held that, in interpreting a provision of Community law, it is necessary to consider not only its wording but also the context in which it occurs and the objects of the rules of which it forms part.
48. I am of the view that the arguments of the interveners, based on the wording of Article 2 of the Directive and the intention of the legislature, in support of allowing a colour per se to be registered as a trade mark are not persuasive.
49. If one begins by considering the wording of Article 2 of the Directive, which is consistent on the point in most of the languages in which it is published, I am of the opinion that no conclusion can be drawn from the expression any sign or from the indicative character of the list of signs set out in this article as being capable of being graphically represented.
50. On the contrary, the presence of an ambiguity in the article in question on the issue of whether a colour alone may be considered to be a sign capable of being a trade mark is evidenced by the fact that the transposition of this article into the legislation of the different Member States has given rise to differing solutions. Thus, the registration of a colour per se is expressly excluded by Portuguese legislation. It is allowed under French and Italian law only for shades of colours and chromatic tonalities respectively. It is permitted under German law. Lastly, Benelux, Danish, Greek, Irish, Austrian, Finnish, Swedish and United Kingdom law make no express reference to the point. The same has been the case in Spanish law since the entry into force on 31 July 2002 of the new law on trade marks.
51. Secondly, the joint declaration of the Council and the Commission referred to above appears to me to have no legal force for two reasons.
52. First, in its decision in the Antonissen case the Court held that a declaration recorded in the minutes of a meeting of the Council at which a provision of secondary legislation was adopted could not be used for the purpose of its interpretation where no reference was made to the content of the declaration in the wording of the provision in question, and the declaration therefore had no legal significance. This approach was confirmed by the Court in the VAG Sverige case.
53. Secondly, it should be noted that the Council and the Commission indicated in the preamble to the declaration that it did not seek to preempt the interpretation of the Directive by the Court. The Council and the Commission were thus careful expressly to limit the legal effects of their declaration. It would therefore be wrong to draw conclusions from the intention of the legislature in order to interpret Article 2 of the Directive.
54. In this context, it is worth noting that Article 15 of the Agreement on Traderelated Aspects of Intellectual Property Rights to which both the Member States and, to the extent that it falls within its competence, the Community have acceded refers only to combinations of colours. This limitation allows one to assume that in the negotiations leading to the WTO agreements a colour per se had been considered ineligible for registration as a trade mark. This analysis is strengthened by the fact that the original text of the article, dating from 1990, referred to colours.
55. Consideration of the scheme of the Directive and the purpose underlying the requirement in question also suggests that a colour per se should not be a sign capable of constituting a trade mark.
56. It is apparent from the scheme of the Directive that it contemplates the protection of a trade mark immediately it is registered, and before its use. Registration is therefore subject to a certain number of conditions which require to be verified by the competent authority.
57. Thus the sign in question must be capable generally of constituting a trade mark in terms of Articles 2 and 3(1 )(a) of the Directive. It must also not be subject to any of the other grounds for refusal set out in Article 3(1), nor must it conflict with earlier rights of the kind referred to in Article 4 of the Directive.
58. As these conditions fall by definition to be examined independently of any consideration of the possible use of the mark, such examination can only take place on the basis of the sign as it is described in the application for registration.
59. If the sign complies with the specified requirements, it will be registered as a trade mark. It is only after the mark is registered that the competent authority can determine whether a competitor's sign is identical to the mark or presents a likelihood of confusion with it in terms of Article 5 of the Directive. Lastly, any analysis of the question whether the proprietor of a trade mark has put it to genuine use, so as not to be deprived of his rights under Article 10 of the Directive, can likewise only follow registration.
60. It therefore follows from the scheme of the Directive that it is the graphic representation of the sign set out in the application for registration that allows an assessment to be carried out as to whether all the conditions relating to the acquisition of rights to the trade mark are complied with and which determines the rights and obligations conferred by its registration.
61. The scheme of the Directive thus indicates that the first condition under Article 2 is designed to allow precise identification of the sign that will be used by the applicant in order to distinguish his goods and services.
62. This interpretation is supported by the purpose underlying the requirement in question. As Advocate General Ruiz-Jarabo Colomer explained in his Opinion in the Sieckmann case (Case C-273/00) pending before the Court, the requirement that the sign be capable of being represented graphically is based on the principle of legal certainty.
63. According to the Advocate General, [a] registered trade mark confers a monopoly on its proprietor, allowing him exclusive use of the signs constituting it, to the exclusion of all other parties. An inspection of the register should allow a person to know, with as much certainty as the registration system will allow, the nature and scope of the signs, indications and symbols appearing on the register and it is for this reason that they require to be represented graphically. If an undertaking acquires a monopoly in certain signs and indications in order to distinguish its goods and services from those of other undertakings, it is necessary to be able to establish clearly what the symbols are which constitute it so that the others are aware of what it is they must refrain from doing. The counterpart of the monopoly conferred by registration of the trade mark is that third parties must be clearly informed as to the sign which is protected.
64. It follows that not every form of graphic representation will suffice. Two conditions must be met. First, the representation must be clear and precise in order that one may know beyond any possible doubt what it is that is being given the benefit of exclusive rights. Secondly, it must be intelligible to persons wishing to inspect the register, namely other manufacturers and consumers. It should not be necessary to go to inordinate lengths to ascertain what sign the applicant will actually use.
65. I do not consider that a colour per se meets these conditions. I should say at the outset that I make no distinction between a colour which is reproduced in the application for registration and a colour which is designated by an internationally applied body of rules. In the latter case, it does not seem to me that the effort demanded of a consumer or a competitor in inspecting the relevant group of specimens in order to see what shade the applicant claims is excessive. Unless such a collection of specimens were difficult of access, a designation of this kind would allow a person to know clearly and unambiguously what colour the applicant had selected.
66. I am, however, of the view that the reproduction or designation of a colour in itself does not provide any means of determining what sign the applicant proposes to use in order to distinguish his goods and services.
67. As was mentioned at point 45 of this Opinion, a colour is always the attribute of something else. Unlike the signs listed in Article 2 of the Directive, such as words, designs, letters, numerals, the shape of goods or their packaging, a colour alone has no independent existence.
68. In other words, it would not be possible to determine precisely how the colour applied for will appear on the goods in relation to which the application for registration is made. It could equally well extend to the colouring of the whole of their external surface or their packaging, or appear on only some of these, or (in the case of very distinct designs) be surrounded by the generic colour of the goods.
69. The same applies to services. By definition, services have no material form in themselves, and thus have no colour. The trade mark could therefore only be applied to documents, vehicles or other objects used in connection with their supply. Once again, the colour applied for could appear on the whole of the surface of the item concerned, or (in the case of very distinct designs) on part only of it.
70. Moreover, if the applicant were to apply for registration of a colour per se, thereby seeking to obtain a monopoly in its use, this would suggest that he was trying to reserve all these possibilities.
71. This is shown all the more clearly if, as in the Heidelberger Baitcbemic case cited above, the applicant were to apply for registration of several colours per se. The absence of any arrangement of these colours in a single whole or in a pattern specified in the application for registration would obviously allow for a multitude of possible combinations to be used.
72. It would thus be very difficult in practice for a competent authority, faced with an application relating to a colour without shape or contour to ascertain whether the other conditions required for the registration of a trade mark had been met. Depending on whether it covered the whole surface of the goods or was a very distinct design, the colour might appear to a consumer to be wholly ornamental or a part of a distinctive sign. One might also ask in what conditions the competent authority could properly establish the likelihood of confusion between the sign applied for and a previously registered trade mark which included the colour applied for or a shade of it.
73. I would go on to submit that the registration of a colour per se as a trade mark would not allow other traders inspecting the register to determine what their rights were.
74. Under Article 5 of the Directive, a proprietor may prevent the use in course of trade in relation to any goods or services identical with or similar to those for which the trade mark has been registered, not only of a sign identical to it, but also of any sign capable of being confused with the trade mark on the part of the public.
75. If the registered trade mark is the colour per se, other traders would have difficulty in establishing in what way it would still be possible for them to use that colour for goods or services identical with or merely similar to those for which registration of the colour had been permitted.
76. Besides, this uncertainty would affect not only the colour as reproduced in the register or designated in an internationally agreed set of rules, but a large number of shades close to it. As was pointed out in points 43 and 44 of this Opinion, people's ability to distinguish shades of colours without risk of confusion is limited both by the properties of the human eye and the variable nature of the colour of objects having regard to lighting conditions and the distance from which they are observed.
77. I am of the opinion that these difficulties are contrary to the principle of legal certainty underlying the requirement that a sign be capable of being represented graphically. It should be recalled that in its judgment in Canon, the Court expressly recognised the importance that should be attached to this principle in the field of trade marks.
78. In light of all of the above, I am of the opinion that a colour without shape or contour cannot be considered to be a sign capable of being represented graphically within the meaning of Article 2 of the Directive.
79. Nor does a colour per se meet the second requirement under Article 2 of the Directive, which provides that for a sign to constitute a trade mark it must be capable of distinguishing the goods or services of one undertaking from those of other undertakings.
sec_3
3. The ability to distinguish the goods and services of one undertaking from those of other undertakings
80. I am of the view that Article 2 of the Directive excludes categories of signs or indications which are intrinsically incapable of having a distinctive character.
81. Such an analysis is not contrary to the case-law of either the Court of First-Instance of the European Communities or the Court of Justice, which stales that the distinctive character of a trade mark can be assessed only in relation to the goods or services in respect of which registration of the sign is applied for. This case-law was based on an analysis of the absolute grounds for refusal specified in Article 7(1 )(b) to (e) of the Regulation and the corresponding provisions of the Directive, in cases concerning signs covered by a category expressly referred to in Article 4 of the Regulation or Article 2 of the Directive, or in the context of the application of Article 3(3) of the Directive relating to the acquisition of a distinctive character through use.
82. Moreover, any other interpretation would deprive the second requirement of Article 2 of the Directive of much of its practical effect. The same would apply to a large extent to Article 3(1 )(a) of the Directive, which provides that signs which cannot constitute a trade mark cannot be registered. It should be borne in mind that the requirement that trade marks which are devoid of any distinctive character should not be registered is expressly repeated in Article 3(1)(b) of the Directive.
83. Moreover, even though the Court has not yet had to pronounce on the question whether an application for registration of a sign or indication not listed in Article 2 of the Directive or Article 4 of the Regulation may be refused on the basis of these provisions alone, it has on several occasions affirmed the overriding nature of the requirements specified in Articles 2 and 3(1)(a) of the Directive. Likewise, in its judgment in Phillips Electronics, cited above, it stated that it is clear from the wording of Article 3(1)(a) and the structure of the Directive that that provision is intended essentially to exclude from registration signs which are not generally capable of being a trade mark.
84. The question at this stage is therefore one of determining whether a colour per se can have a distinctive character having regard only to its intrinsic characteristics. In my view there are two reasons why it cannot.
85. First, and as has just been pointed out, an application for registration of a colour per se would not allow determination of the sign actually appearing on the goods or in association with the services in question. An assessment of whether or not a sign is capable of having a distinctive character requires in my view that one should be able to know exactly what the sign is.
86. Secondly, I am of the opinion that a colour per se cannot fulfil the task of indicating the origin of goods or services. It should be recalled that the Court has defined this task as being one which is to guarantee the identity of the origin of the marked product to the consumer or ultimate user by enabling him without any possibility of confusion to distinguish that product from products which have another origin. The trade mark should guarantee the origin of the product bearing that mark. The colour must therefore be capable of being very clearly defined.
87. As was pointed out in point 45 of this Opinion, if a colour per se, that is to say as an abstract entity, is to have meaning and provoke feelings, this is only because of the conventions in force in a society at a given time. Moreover, even this meaning or these feelings, which may be based on deeply-rooted cultural phenomena, are dependent on the conditions in which the colour is seen. It follows that a colour can only be clearly defined if it is seen in the context of a particular shape or design.
88. It is therefore wrong in my opinion to think that a colour without shape or contour can be defined in a way that is sufficiently precise that it indicates without any possible confusion the origin of goods or services.
89. It is nevertheless true that the OHIM has registered a colour per se as a trade mark on several occasions. For example, the colour lilac/violet has been registered for chocolate, the colour magenta for goods and services in the telecommunications field and the colour yellow for anticorrosion products. OHIM took the view that each of these colours had acquired a distinctive character in relation to the goods or services in question through the use made of it.
90. Registrations of this kind appear to me to be questionable having regard to the nature of the sign which consumers truly perceive and which they have learned to recognise as indicating the origin of the goods and services in question. As mentioned above, colour is always an attribute of something else. Therefore, what consumers have learned to recognise is not the colour in itself, but an object vested with this colour. Colour is thus always mentally associated with something else. Usually, the association will be with a logo or a series of letters. As a minimum, the other thing will comprise the shape of goods that have been put on the market.
91. If this other thing is lacking, consumers will no longer be able to identify the origin of the goods or services concerned with certainty. In other words, if the logo or the series of letters that they were used to seeing on goods or their wrapping were no longer to be there, or if the shape of goods were to have changed, consumers might be in doubt as to their origin, even though the colour remained the same.
92. Accordingly, to reduce signs to an abstract colour and to register that as a trade mark amounts in my view to treating a part of the trade mark as representing the whole. The trade mark does not consist of the colour per se, but of that colour associated with another thing or applied to an object.
93. This approach has been followed by certain national trade mark offices. The competent authority in the United Kingdom did not register the colour green per se on an application by the petroleum company BP for goods and services sold in its petrol filling stations, but did so for that colour when applied to the exterior of premises or buildings conforming to schedules annexed to the application forms. In the same way, the authority did not register the colour pink per se for insulation materials, but the colour pink, as defined by Pantone No 196C, applied to the entire surface of the goods. In the field of service marks, the competent authority in Ireland allowed United Parcel Service of America to register a trade mark defined as: The mark consists of the colour brown as shown on the form of application, being the predominant colour applied to the visible surface of the uniforms worn by staff in the performance of the services.
94. Moreover, this analysis, in terms of which it is not the colour per se that can acquire a distinctive character through use, corresponds with the rules currently applied by the United States Patent and Trademark Office. In this regard, it should be noted that the Qualitex trade mark, which allowed the Supreme Court of the United States to rule for the first time on the protection of colour marks and to accept that the concept was possible, does not consist of the shade of green-gold in itself, but in a particular shade of green-gold applied to the top and the surfaces of the goods.
95. In the light of the above, it is my opinion that these examples of the registration of a colour per se as a trade mark do not affect my interpretation of Article 2 of the Directive.
96. On the contrary, I am of the view that the registrations referred to in point 93 of this Opinion show that traders who use a colour to identify their goods or services should be able to benefit from the protection conferred by trade mark legislation without it being necessary to register the colour per se. Moreover, those traders could equally make use of the law of their Member States relating to unfair competition, to civil liability or to consumer protection, as the sixth recital and Article 5(5) of the Directive show.
97. That being so, there is no reason to believe that the protection given to those traders against competitors who, in using the same colour or a shade of it, would be seeking to gain from the reputation or distinctive character of their trade mark, would be eliminated or reduced by the exclusion of colours per se from the categories of signs referred to in Article 2 of the Directive.
98. On the other hand, there are good reasons to believe that the registration of colours per se as trade marks could have negative implications for the freedom of competition which, as was pointed out in point 8 of this Opinion, is the object of the Directive.
99. Registration of a colour per se would, by application of Article 5 of the Directive and, at the very least, by reason of the impossibility faced by other traders of establishing precisely whether and how they could continue to use that colour, result in conferring a right to exclusive use of it on the proprietor of the trade mark. Furthermore, as was pointed out at point 76 of this Opinion, that exclusive use would extend not only to the colour as reproduced in the application for registration or designated by an internationally agreed set of rules, but could extend to a large number of shades of it. In other words, it is very likely that registration of a particular shade of blue as a trade mark would lead to conferring on the proprietor of the mark the exclusive right to use the colour blue.
100. It would then follow, having regard to the feelings they may provoke in an observer and their more or less visible nature, that the number of colours capable of being used in practice for particular goods or services would be even more limited. This can be seen if one refers to the colours of the petroleum distribution companies given as an example by those who were in favour of the registration of colours per se as trade marks. The number of colours used by those companies on the exterior of their buildings and in their logos is lower than the number of colours having a specific name and most of them are used concurrently by several companies.
101. It would thus be enough for several colours per se to be registered as trade marks to confer a real monopoly of use of the colour on a few traders. Such a monopoly could distort competition.
102. As the Commission quite correctly pointed out in its written observations, colours are now of great importance to undertakings. More and more of them have taken to colouring their goods and objects associated with the provision of their services. These colours serve to attract the attention of consumers. Moreover, because they provoke feelings, they allow undertakings to place their goods and services in our imagination. Colours have thus become a real means of communication between undertakings and consumers. It is likely that their use will grow, given the dominant role that images possess in communications today.
103. It is thus possible to conceive that a trader who was prevented from using colours or even a certain number of them would be disadvantaged in relation to his competitors and that a monopoly of use of colours could even stop new traders entering a particular market.
104. It follows from this that an analysis of the objectives of trade mark law supports the conclusion that colours per se should not be allowed to be the subject of exclusive use by certain traders and that they should remain available to all.
105. In the light of the reasons set out above, I propose that the Court should reply that Article 2 of the Directive should be interpreted as meaning that a colour per se, without shape or contour, cannot constitute a sign capable of being represented graphically and of distinguishing the goods or services of one undertaking from those of other undertakings.
106. Given that answer, the other questions put by the national court arc irrelevant to the main proceedings. I am of the view that they do not require to be answered.
sec_5 V —
Conclusion
107. In light of all the foregoing considerations, I propose that the Court answer the questions put by the Hoge Raad der Nederlanden as follows: Article 2 of First Council Directive 89/104/EEC of 21 December 1988, to approximate the laws of the Member States relating to trade marks, should be interpreted as meaning that a colour per se, without shape or contour, does not constitute a sign capable of being represented graphically and of distinguishing the goods or services of one undertaking from those of other undertakings.