Gestalterische Freiheit bei der Markennutzung
Wenn eine Wortmarke durch gestalterische Elemente erweitert wird, diese aber von ihrer Bedeutung hinter der Wortmarke zurücktreten, verringert dies nicht die Unterscheidungskraft der Wortmarke.
Im diesem Fall wurde die Wortmarke "Coloris" durch einen Globus sowie die Worte "global coloring concept", "gcc" und "colorants & technologies" in kleinerer Schrift untermalt.
Urteil vom 30.11.2009
JUDGMENT OF THE COURT OF FIRST INSTANCE (Third Chamber)
30 November 2009 (*)
(Community trade mark – Opposition proceedings – Application for Community figurative mark COLORIS – Earlier national word mark COLORIS – Relative ground for refusal – Genuine use of the earlier trade mark – Article 15(2)(a) and Article 43(2) and (3) of Regulation (EC) No 40/94 (now Article 15(1)(a) and Article 42(2) and (3) of Regulation (EC) No 207/2009))
In Case T-353/07,
Esber, SA, established in Burceña-Baracaldo (Spain), represented by T. Villate Consonni, J. Calderón Chavero and M. Yañez Manglano, lawyers,
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Folliard-Monguiral, acting as Agent,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the Court of First Instance, being
Coloris Global Coloring Concept, established in Villeneuve-Loubet (France), represented by K. Manhaeve, lawyer,
ACTION brought against the decision of the First Board of Appeal of OHIM of 28 June 2007 (Case R 1060/2006-1), concerning opposition proceedings between Coloris Global Coloring Concept and Esber, SA,
THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (Third Chamber),
composed of J. Azizi, President, E. Cremona (Rapporteur) and S. Frimodt Nielsen, Judges,
Registrar: N. Rosner, Administrator,
having regard to the application lodged at the Registry of the Court of First Instance on 13 September 2007,
having regard to the response of OHIM lodged at the Registry of the Court on 29 January 2008,
having regard to the response of the intervener lodged at the Registry of the Court on 24 January 2008,
further to the hearing on 8 July 2009,
gives the following
On 20 August 2002, the applicant, Esber, SA, filed a Community trade mark application at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), 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 Community trade mark (OJ 2009 L 78, p. 1)).
The application concerned the registration of the figurative sign reproduced below:
The goods in respect of which registration was sought are, inter alia, in Classes 2 and 16 under 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, for each of those classes, to the following description:
– Class 2: ‘Paints, lacquers and dyes; thinners; enamels and aluminium powder for painting; binding preparations for paints’;
– Class 16: ‘Publications; books, magazines, periodicals; printed matter; paper or plastic not included in other classes, in the form of sheets or bags, printed or not, for wrapping or packaging; labels; paintbrushes, artists’ materials, adhesives for stationery or household purposes; pencils and drawing implements’.
On 4 August 2003, the Community trade mark application was published in Community Trade Marks Bulletin No 64/2003.
On 31 October 2003, Allios S.A. gave notice of opposition to registration of the trade mark applied for, pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009). The opposition was directed against the goods in Class 2 covered by the mark applied for, and against the goods ‘artists’ materials, paintbrushes, pencils and drawing implements’ in Class 16.
The opposition was based on the earlier national word mark COLORIS, registered in France, on 12 February 1998, under No 98/717642, covering goods in Class 2 and corresponding to the following description: ‘Paints; varnishes (except insulating varnishes); lacquers (paints); preservatives against rust and against deterioration of wood; colorants; mordants (not for metal, not for seeds); raw natural resins; metals in foil and powder form for painters, decorators, printers and artists’.
The grounds relied on in support of the opposition were those under Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009).
Subsequently, during the proceedings before OHIM, the earlier mark was transferred to the intervener, Coloris Global Coloring Concept.
On 14 June 2006, the Opposition Division of OHIM upheld the opposition in part and rejected the application for registration for all the goods in Class 2 covered by the trade mark applied for. However, the Opposition Division rejected the opposition in relation to the goods in Class 16 covered by the trade mark applied for.
On 1 August 2006, the applicant filed a notice of appeal at OHIM, pursuant to Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009), against the decision of the Opposition Division inasmuch as it rejected the application for registration. In its appeal, the applicant claimed that the Opposition Division had assessed incorrectly the evidence of genuine use of the earlier mark submitted by the intervener.
By decision of 28 June 2007 (‘the contested decision’), the First Board of Appeal of OHIM dismissed the appeal. It found, in particular, that evidence of genuine use of the earlier mark had been produced.
Forms of order sought
The applicant claims that the Court should:
– annul the contested decision;
– reject the opposition and register the trade mark applied for;
– order OHIM to pay the costs.
OHIM and the intervener contend that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
In support of its action, the applicant relies on a single plea, alleging infringement of Article 15(2)(a) and Article 43(2) and (3) of Regulation No 40/94 (now Article 15(1)(a) and Article 42(2) and (3) of Regulation No 207/2009).
Arguments of the parties
The applicant claims that the Board of Appeal erred in finding that the evidence submitted by the intervener during the administrative procedure was sufficient to prove genuine use of the earlier mark in France.
The applicant claims, first, that, in the evidence submitted by the intervener, the mark COLORIS never appears on its own, but exclusively in complex forms, such as ‘coloris gcc’, ‘coloris global coloring concept’ or ‘coloris gcc global coloring concept’, together with an image of a globe. The signs used in the evidence are therefore substantially different from the earlier mark. In addition, the use of the symbol ‘®’ proves that the sign made up of the word element ‘coloris global coloring concept’ together with an image of a globe is an independent registered trade mark. Moreover, in the evidence, the signs do not refer to goods. They are thus not used as marks, but simply refer to an undertaking.
Second, none of the evidence submitted by the intervener is capable of establishing that a colorant marked by the term ‘COLORIS’ was marketed in France during the relevant period. The evidence is thus insufficient to prove genuine use of the earlier mark.
OHIM and the intervener contest the applicant’s arguments.
Findings of the Court
First of all, it is necessary to point out that the applicant has not contested either before the Board of Appeal or in this action the finding that there exists a likelihood of confusion between the Community trade mark applied for and the earlier national mark, in respect of the relevant goods in Class 2. On the contrary, it has limited its complaints exclusively to the issue of proof of genuine use of the earlier mark.
In that regard, it should be borne in mind that, according to settled case-law, it is clear from Article 43(2) and (3) of Regulation No 40/94, read in the light of the ninth recital in the preamble thereto (now recital 10 in the preamble to Regulation No 207/2009), and from Rule 22(3) of Commission Regulation (EC) No 2868/95 of 13 December 1995, implementing Regulation No 40/94 (OJ 1995 L 303, p. 1), as amended, that the ratio legis of the provision requiring that the earlier mark must have been put to genuine use if it is to be capable of being used in opposition to a trade mark application is to restrict the number of conflicts between two marks, where there is no good commercial justification deriving from active functioning of the mark on the market. Pursuant to Rule 22(3) of Regulation No 2868/95, evidence of use must concern the place, time, extent and nature of use of the earlier trade mark (see, to that effect, Case T-203/02 Sunrider v OHIM – Espadafor Caba (VITAFRUIT)  ECR II-2811, paragraphs 36 to 38 and the case-law cited).
There is genuine use of a trade mark where the mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark (see, by analogy, Case C-40/01 Ansul  ECR I-2439, point 43). Moreover, the condition relating to genuine use of the trade mark requires that the mark, as protected on the relevant territory, be used publicly and outwardly (VITAFRUIT, paragraph 20 above, paragraph 39; see also, to that effect and by analogy, Ansul, paragraph 37).
When assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real, particularly the usages regarded as warranted in the economic sector as a means of maintaining or creating a share in the market for the goods or services protected by the mark, the nature of those goods or services, the characteristics of the market and the scale and frequency of use of the mark (VITAFRUIT, paragraph 20 above, paragraph 40; see also, by analogy, Ansul, paragraph 21 above, paragraph 43).
As to the extent of the use to which the earlier trade mark has been put, account must be taken, in particular, of the commercial volume of the overall use, as well as of the length of the period during which the mark was used and the frequency of use (VITAFRUIT, paragraph 20 above, paragraph 41, and Case T-334/01 MFE Marienfelde v OHIM – Vétoquinol (HIPOVITON)  ECR II-2787, paragraph 35).
To examine whether an earlier trade mark has been put to genuine use, an overall assessment must be carried out, which takes into account all the relevant factors of the particular case (VITAFRUIT, paragraph 20 above, paragraph 42, and HIPOVITON, paragraph 23 above, paragraph 36). In addition, genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (Case T-39/01 Kabushiki Kaisha Fernandes v OHIM – Harrison (HIWATT)  ECR II-5233, paragraph 47, and Case T-356/02 Vitakraft-Werke Wührmann v OHIM – Krafft(VITAKRAFT)  ECR II-3445, paragraph 28).
Under the combined provisions of Article 15(2)(a) and Article 43(2) and (3) of Regulation No 40/94, proof of genuine use of an earlier national or Community trade mark which forms the basis of an opposition against a Community trade mark application also includes proof of use of the earlier mark in a form differing in elements which do not alter the distinctive character of that mark in the form under which it was registered (see Case T-29/04 Castellblanch v OHIM – Champagne Roederer (CRISTAL CASTELLBLANCH)  ECR II-5309, paragraph 30 and the case-law cited).
It is in the light of those considerations that the Court must assess the analysis and the conclusions of the Board of Appeal concerning proof of genuine use of the earlier mark.
In that regard, it should be pointed out that, since the applicant’s Community trade mark application was published on 4 August 2003, the period of five years referred to in Article 43(2) of Regulation No 40/94 extends from 5 August 1998 until 4 August 2003 (‘the relevant period’). In addition, it should also be pointed out that, as is clear from points 8 and 9 of the contested decision, the evidence submitted by the intervener to the Opposition Division concerning the use in France of the mark COLORIS is the following:
(a) a colour photograph of a metallic can with a capacity of 2 litres;
(b) invoices issued by printing and graphic design companies for services consisting of printing the intervener’s pamphlets, catalogues, advertisements, product labels, letterheads and other similar items, as well as samples of those printed items;
(c) a label of the type used on the metallic cans;
(d) a declaration whereby a manufacturer of metallic cans certifies that, in 2002 and 2003, it sold some thousands of cans marked ‘COLORIS’ to an undertaking called Allios Washperle;
(e) three invoices concerning the years 2002 and 2003 issued to the intervener by an undertaking called Allios SAS for the sale of pigments, cans and raw materials;
(f) photographs of the intervener’s industrial premises;
(g) examples of advertising published in magazines and used in trade exhibitions relating to colorants;
(h) invoices for the years 1999 to 2003, issued by the intervener to French and foreign clients for the sale of colorants;
(i) an agency agreement and a number of know-how and commercial agreements concluded between the intervener and other parties.
The alleged alteration of the distinctive character of the earlier mark
The applicant alleges, first, that the complex forms of the earlier word mark COLORIS used in the evidence are different signs which alter its distinctive character for the purposes of Article 15(2)(a) of Regulation No 40/94. In that regard, it should be noted that the distinctive character of the word element ‘coloris’ is not disputed by the parties.
The complex signs used in the evidence differ, essentially, from the earlier word mark as a result of the presence of the word elements ‘global coloring concept’ and ‘gcc’ together with the image of a globe and, sometimes, the additional word element ‘colorants & technologies’ below the sign. It is therefore necessary to examine whether those variations are capable of affecting the distinctive character of the earlier word mark.
In that regard, it must be noted that the assessment of the distinctive or dominant character of one or more components of a complex trade mark must be based on the intrinsic qualities of each of those components, as well as on the relative position of the different components within the arrangement of the trade mark (see Case T-135/04 GfK v OHIM – BUS (Online Bus)  ECR II-4865, paragraph 36 and the case-law cited).
In the present case, the words ‘global coloring concept’ constitute one long word element, and are always juxtaposed with the term ‘coloris’ and positioned below it. In the evidence submitted, the size of the letters in those words is never greater than that in the term ‘coloris’. In contrast, in a number of items of evidence those words are appreciably smaller than the term ‘coloris’, and their position is thus clearly secondary. In addition, they are words with a general meaning. Furthermore, the word ‘coloring’ refers to the goods concerned and, consequently, has a certain descriptive character.
Similar considerations apply to the word element ‘gcc’. That element is also always juxtaposed with the term ‘coloris’ and positioned below it, and its size is not predominant in relation to that of the term. In addition, it does not have an obvious meaning or a particular inherent quality, and the fact that it is an acronym of ‘global coloring concept’ does not alter that assessment.
In the light of those considerations, it must be concluded that the word elements which accompany the earlier word mark COLORIS do not affect its distinctive character.
As for the figurative element representing the globe, it does not alter the distinctive character of the earlier word mark either. It is a generic representation which is not reproduced in a particularly creative or unusual way. In addition, nor does its size, which is not disproportionate in relation to the other elements of the signs concerned, call that finding into question.
Lastly, as for the word element ‘colorants & technologies’, it must be found that, when used, it is always placed conspicuously below the other elements, so that it has a clearly secondary position. In addition, it is a complex word element made up of a sub-element, ‘colorants’, which refers expressly to the goods concerned and which thus has a descriptive character, and another sub-element, ‘technologies’, which has a generic character. In the light of those considerations, it can be concluded that that complex word element also does not affect the distinctive character of the earlier word mark.
In conclusion, it follows from the foregoing that the complex forms, including the earlier word mark, used in certain items of evidence do not have any differences which alter the distinctive character of the earlier mark, within the meaning of Article 15(2)(a) of Regulation No 40/94. Consequently, the Board of Appeal did not err when it took those signs into consideration for the purpose of assessing the evidence of genuine use of the earlier mark.
That conclusion cannot be called into question by the applicant’s other arguments. First, the argument that the sign made up of the word element ‘coloris global coloring concept’ together with an image of a globe is a registered mark different from the earlier mark has no factual basis, since that sign was registered as a trade mark only on 22 November 2004, that is, after the expiry of the relevant period. Moreover, since the complex sign is a particular representation of the earlier word mark which does not alter its distinctive character, the fact that it was registered as a trade mark is not relevant.
Second, as to the argument that, in the evidence, the signs are not used as marks but merely refer to an undertaking, it must be stated first that it has no factual basis. The case-file does not show that, in the evidence submitted by the intervener, the signs concerned were used as a trade name or refer to an undertaking or to a particular type of company. In addition, it is not well founded. The fact that a word element is used as the company’s trade name does not preclude its use as a mark to designate goods (see, to that effect, judgment of 27 September 2007 in Case T-418/03 La Mer Technology v OHIM – Laboratoires Goëmar (LA MER), not published in the ECR, paragraph 74).
Proof of genuine use of the earlier mark
With regard to the evidence submitted to OHIM by the intervener, it must be stated, first of all, that the intervener submitted a number of invoices (see paragraph 27(h), above) dating from 1999 to 2003, which it issued for the sale of colorants to different clients both in France and the rest of the world. Those invoices contain, in the header, an express reference to the earlier mark in the complex forms in the light of which the Court reached the conclusion that they did not affect its distinctive character. They prove that the intervener sold colorants under the earlier mark in noteworthy quantities to a great number of companies established in France during the relevant period. They also show that the earlier mark was used publicly and outwardly and not solely within the undertaking which owns the earlier trade mark (see, to that effect, VITAFRUIT, paragraph 20 above, paragraph 50).
In addition, the intervener submitted a copy of a colour photograph showing a metallic can (see paragraph 27(a) above). That photograph shows a type of container which the intervener uses for marketing colorants under the mark COLORIS. The indications on the right of the mark show clearly that that can contained colorant. In addition, the fact that there are instructions in French below the French flag to the right of the mark proves that the colorant contained in the can was marketed in French-speaking countries and thus constitutes a very strong indication that it was marketed in France. That indication is supported by the invoices mentioned in the previous paragraph which prove that the intervener sold colorants in France during the relevant period.
However, the date indicated on the document containing the copy of the photograph, namely 10 December 2003, raises two difficulties. First, 10 December 2003 is a date which falls outside the relevant period during which genuine use of the earlier mark was to be proved. However, in that regard, it follows from the case-law that it is not precluded, in assessing the genuineness of use during the relevant period, that account be taken, where appropriate, of any circumstances subsequent to that period. Such circumstances may make it possible to confirm or better assess the extent to which the trade mark was used during the relevant period (see, to that effect, orders in Case C-259/02 La Mer Technology  ECR I-1159, paragraph 31, and Case C-192/03 P Alcon v OHIM  ECR I-8993, paragraph 41; see also, to that effect, judgment of 10 September 2008 in Case T-325/06 Boston Scientific v OHIM – Terumo (CAPIO), not published in the ECR, paragraph 38). Consequently, even if the date is subsequent to the expiry of the relevant period, it is not precluded that that photograph be taken into account in order to assess the genuine use of the earlier mark during the relevant period.
Second, concerning the date indicated in that document, clearly such an indication does not constitute reliable proof of the date of the photograph.
However, and in any event, the Court finds that the probative value of that photograph is borne out by another piece of evidence contained in the case-file. The file contains a copy of a fax dated 19 November 1998 showing a sample of a label of the type affixed to the metallic cans for colorants. That label is wholly comparable, even almost identical, to that used on the can which appears in the photograph mentioned above. In addition, 19 November 1998 falls within the relevant period. That label is thus capable of proving that, in fact, during the relevant period and even five years before the presumed date of the photograph mentioned above, the intervener had labels produced to affix to the metallic cans on which the earlier word mark COLORIS appeared and which were used for marketing colorants under that mark.
In addition, the intervener produced a number of invoices issued by printing and graphic design companies for printing pamphlets, catalogues, advertisements, product labels, letterheads and other similar items and, as proof that the work had been done, samples of those printed items (see paragraph 27(b), above). In that regard, it must be pointed out that the dates of the majority of those invoices fall within the relevant period, while the samples, apart from that mentioned in paragraph 43 above, are not dated, so that it is not possible to establish with certainty a link between those samples and the allegedly corresponding invoices. However, clearly a number of the invoices produced refer expressly to the word mark COLORIS, such as those of 30 November 1998 and 23 September 2002 which expressly refer to ‘films for 2 L COLORIS metallic can’ and to a ‘COLORIS pamphlet’.
The intervener also submitted a declaration in which a company states that, in 2002 and 2003, it sold the intervener some thousands of cans bearing the mark COLORIS (see paragraph 27(d), above). That declaration proves that the intervener purchased, during the relevant period, some thousands of cans bearing the earlier mark.
With regard to the other evidence produced by the intervener, clearly it is not relevant for proving use of the earlier mark in France during the relevant period. The three invoices mentioned in paragraph 27(e) above concern sales within the same group and thus only show, as OHIM itself concedes, use of the mark for internal purposes. The photos of the intervener’s industrial premises (see paragraph 27(f) above) are in no way capable of demonstrating the marketing of the goods concerned in France under the earlier mark during the relevant period. As to the examples of advertising mentioned in paragraph 27(g) above, although they are capable of showing that the intervener did in fact advertise the goods concerned under the earlier mark during the relevant period, clearly, however, of the documents of which it was possible to verify the date, none refers to France. Similarly, the agreements mentioned in paragraph 27(i) above are not relevant since none of them refers to France.
In accordance with the case-law mentioned in paragraphs 22 to 24 above, the evidence submitted by the intervener must be assessed overall. In that regard, the Court finds that that evidence, considered as a whole, provides sufficient indications of the place, time, extent and nature of use of the earlier mark.
Indications of the time, place and extent of use may be inferred from the invoices mentioned in paragraph 39 above which prove the sale of colorants in large quantities by the intervener to a great number of companies established in France during the relevant period.
With regard to the nature of use, the photograph of the metallic can mentioned in paragraph 40 above shows that the word mark appears on packaging used to market colorants. The probative value of that photograph is confirmed in a number of other forms of evidence, such as the sample of the label mentioned in paragraph 43 above, a number of invoices issued by printing companies (see paragraph 44 above), and the declaration of a manufacturer of metallic cans (see paragraph 45 above).
It must therefore be concluded that, considered as a whole, the evidence submitted by the intervener to OHIM supports the finding of the Board of Appeal that genuine use of the earlier mark in the course of the relevant period in France had been established.
Lastly, with regard to the applicant’s argument that the intervener should have substantiated the forms of evidence which it produced before OHIM with public or notarised documents, it is both inadmissible, since it was put forward only at the hearing, and, in any event, unfounded, since it in no way follows from Rule 22(4) of Regulation No 2868/95, concerning the evidence to be produced to establish genuine use of the mark, that such evidence is to consist of public or notarised documents. In addition, the argument that the Board of Appeal should have considered the mark as it was used on the market and not as it was registered was put forward only at the hearing and must therefore also be declared inadmissible.
It follows from all the foregoing that the action must be dismissed.
Under Article 87(2) of the Rules of Procedure of the Court of First Instance, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
As the applicant has been unsuccessful, it must be ordered to pay the costs in accordance with the forms of order sought by OHIM and the intervener.
On those grounds,
THE COURT OF FIRST INSTANCE (Third Chamber)
1. Dismisses the action;
2. Orders Esber, SA to pay the costs.
Delivered in open court in Luxembourg on 30 November 2009.
* Language of the case: English.