OPINION OF ADVOCATE GENERAL
SAUGMANDSGAARD ØE
delivered on 22 November 2018(1)
Case C‑578/17
Oy Hartwall Ab
Interested party:
Patentti- ja rekisterihallitus
(Request for a preliminary ruling from the Korkein hallinto-oikeus (Supreme Administrative Court, Finland))
(Request for a preliminary ruling — Trade marks — Directive 2008/95/EC — Article 2 — Article 3(1)(b) and 3(3) — Grounds for refusal or invalidity — Distinctive character — Distinctive character acquired through use — Inherent distinctive character — Graphic representation — Colour mark or figurative mark — Colour mark presented as figurative mark — Registration requirements — Trade mark categories — Trade mark types — Discrepancies in the trade mark application)
I. Introduction
1. In this request for a preliminary ruling, the Korkein hallinto-oikeus (Supreme Administrative Court, Finland) refers to the Court for a preliminary ruling a number of questions concerning the interpretation of the requirement relating to graphic representation laid down in Article 2 of Directive 2008/95/EC (2) and the requirement relating to distinctive character laid down in Articles 2, 3(1)(b) and 3(3) thereof.
2. The request for a preliminary ruling has its origin in a dispute between Oy Hartwall Ab and the Patentti- ja rekisterihallitus (Finnish Patent and Registration Office). The latter refused a trade mark application from Oy Hartwall for registration of a colour mark on the ground that the trade mark applied for was devoid of distinctive character as a colour mark. In the application, the colour mark was represented graphically as a figure.
3. The case thus raises the question as to how the requirement relating to graphic representation and the requirement relating to distinctive character laid down in Directive 2008/95 are to be interpreted in relation to possible registration of a colour mark. By the questions which it has referred, the national court essentially asks whether Articles 2 and 3 of the directive preclude registration of a colour mark where it is represented graphically as a figure in the trade mark application.
4. In this Opinion, I will set out the reasons why I think, first, that Articles 2 and 3(1)(b) and 3(3) of that directive must be interpreted as meaning that it is relevant to the interpretation of the requirement relating to distinctive character whether a trade mark is to be registered as a figurative mark or as a colour mark and, second, that Article 2 precludes registration of a trade mark such as that in the present case, which shows a figure in its graphic representation, but which the applicant seeks to register as a colour mark.
II. Legal framework
A. Directive 2008/95 (3)
5. Article 2, entitled ‘Signs of which a trade mark may consist’, is worded as follows:
‘A trade mark may consist of any signs capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.’
6. Article 3(1)(b) and 3(3), concerning grounds for refusal or invalidity, states:
‘1. The following shall not be registered or, if registered, shall be liable to be declared invalid:
…
(b) trade marks which are devoid of any distinctive character;
…
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.’
B. Finnish law
7. Directive 2008/95 was transposed into Finnish law by Trade Mark Law No 7/1964 of 10 January 1964, the version of which relevant to this case was most recently amended by Law No 56/2000.
8. Under Paragraph 1(2) (the version of which relevant to this case was most recently amended by Law No 39/1993), any sign which is capable of being represented graphically, and which is capable of distinguishing the goods or services of one undertaking from those of other undertakings, may constitute a trade mark. The provision further states that a trade mark may consist of particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging.
9. Under Paragraph 13 (the version of which relevant to this case was most recently amended by Law 56/2000), the trade mark to be registered must serve to distinguish the trade mark proprietor’s goods from others’ goods. A trade mark which may serve, exclusively or solely in a slightly altered or supplemented form, to designate the kind, quality, quantity, intended purpose, value, geographical origin, or the time of production of the products, must not be regarded as having distinctive character per se. Under that provision, in assessing the sign’s distinctive character, account must be taken of all circumstances, particularly how long and how extensively the trade mark has been used.
III. The main proceedings, questions referred for a preliminary ruling and procedure before the Court
10. On 20 September 2012 Oy Hartwall sought to register the sign set out below with the Patentti- ja rekisterihallitus. According to the graphic representation of the sign, it consists of a blue band with a thin grey line around the edges. The sign was to be registered as a colour mark for goods in Class 32: mineral waters. Oy Hartwall described the colours as follows: The colours of the sign are blue (PMS 2748, PMS CYAN) and grey (PMS 877).
11. In the application, Oy Hartwall had submitted a market survey to the Patentti- ja rekisterihallitus in which the mark applied for had been presented to persons taking part in the study, and a declaration by two of the company’s employees on the use of the trade mark to identify the company’s products.
12. Following a preparatory decision of the Patentti- ja rekisterihallitus, Oy Hartwall indicated that it was applying for registration of the mark as a colour mark and not a figurative mark.
13. By decision of 5 June 2013, the Patentti- ja rekisterihallitus refused the application on the ground that the trade mark applied for was devoid of distinctive character. The grounds for the decision stated inter alia that, according to the established practice of the Patentti- ja rekisterihallitus, the exclusive right to register certain colours cannot be granted without solid evidence that the colours for which registration is sought have become distinctive to the goods over a long period and as a result of extensive use.
14. According to the decision, the market study established the reputation, not of the colours themselves, but of the figurative mark. It has not been established that, at the time the application was filed, the colour combination for which registration is sought had been used to identify the company’s goods for long enough or extensively enough to have acquired a distinctive character in Finland as a result of such use.
15. Oy Hartwall appealed against the decision to the Markkinaoikeus (Market Court, Finland), which dismissed the company’s appeal.
16. In the grounds for its decision, the Markkinaoikeus (Market Court) stated that Oy Hartwall sought registration of a colour combination. The Markkinaoikeus (Market Court) observed inter alia that the graphic representation of the sign in the application did not include a systematic arrangement associating the colours at issue in a predetermined and uniform way. Thus, in the view of the Markkinaoikeus (Market Court), the colour mark applied for did not satisfy the requirements with regard to graphic representation laid down in Paragraph 1(2) of Trade Mark Law No 39/1993, which is necessary for registration.
17. Oy Hartwall appealed against the decision of the Markkinaoikeus (Market Court) to the Korkein hallinto-oikeus (Supreme Administrative Court), the referring court.
18. The Korkein hallinto-oikeus (Supreme Administrative Court) must now decide whether Oy Hartwall’s trade mark should be registered as a colour mark. The Korkein hallinto-oikeus (Supreme Administrative Court) is unsure as to the importance to be given, in an application for the possible registration of the trade mark at issue, to the classification of the mark as a colour mark in the application.
19. By judgment of 28 September 2017, the Korkein hallinto-oikeus (Supreme Administrative Court) decided to stay the proceedings and to refer the following questions to the Court for a preliminary ruling:
‘(1) For the interpretation of Article 2 of Directive 2008/95/EC of the European Parliament and of the Council to approximate the laws of the Member States relating to trade marks (codified version) and the condition relating to the distinctive character of a trade mark within the meaning of Article 3(1)(b) thereof, is it of relevance whether the trade mark is to be registered as a figurative mark or a colour mark?
(2) If the classification of the mark as a colour mark or figurative mark is of importance in the assessment of its distinctive character, is the mark, regardless of its representation as a drawing, to be registered as a colour mark in accordance with the trade mark application, or can it be registered only as a figurative mark?
(3) If it is possible to register, as a colour mark, a mark represented in the form of a drawing in the trade mark application, is it necessary for the registration as a colour mark of a mark which has been graphically illustrated in the trade mark application with the accuracy required by the case-law of the Court of Justice relating to colour marks (and which is not the registration as a mark of a colour in itself, abstract, without shape or contours) to submit in addition solid evidence of use as required by the Patentti- ja rekisterihallitus or any such evidence?’
20. Written submissions have been submitted by Oy Hartwall, the Finnish Government and the European Commission. The Finnish Government and the European Commission took part in the hearing on 6 September 2018.
IV. Analysis
A. Preliminary remarks
21. At the hearing questions were raised as to the Court’s jurisdiction in this case. In light of that, I will note briefly that the Court does have jurisdiction to answer the questions referred. As my analysis of those questions will show, this case does not concern the interpretation of Finnish law, but the interpretation of Articles 2 and 3 of Directive 2008/95. It may be inferred from the sixth recital of the directive that the Member States remain free to fix the provisions of procedure concerning the registration of trade marks. However, as the Finnish Government also pointed out at the hearing, the Member States’ provisions of procedure are to be laid down and administered in such a way as to guarantee compliance with the requirements relating to registration of trade marks, which are harmonised by the directive. In other words, the national authorities are to ensure that the requirements of the directive are complied with, including those laid down in Articles 2 and 3, according to which all trade marks must, in order to be registrable, be capable of being represented graphically and have distinctive character.
B. The questions referred for a preliminary ruling
1. The relevance of whether the trade mark is to be registered as a figurative mark or a colour mark to the interpretation of Article 2 of Directive 2008/95/EC and the condition relating to the distinctive character of a trade mark within the meaning of Article 3(1)(b) and 3(3) thereof? (Question 1)
22. By its first question, the referring court essentially asks the Court, whether, for the interpretation of Article 2 of Directive 2008/95/EC and the condition relating to the distinctive character of a trade mark within the meaning of Article 3(1)(b) and 3(3) thereof, it is of relevance whether the trade mark is to be registered as a figurative mark or a colour mark. (4)
23. I note at the outset that the Finnish Government stated at the hearing that the Finnish authorities alone have the power to determine whether the trade mark applied for can be registered as a colour mark. This is so because, according to the information provided, under Finnish law, the Finnish authorities do not have the power to alter the choice of the trade mark type which was made in the trade mark application. Since Oy Hartwall applied for registration of a colour mark, (5) the Finnish authorities thus have no power to examine whether the trade mark is registrable instead — or also — as a figurative mark. (6)
24. In the light of this, I proceed below from the assumption that the subject matter of the trade mark applied for is a colour mark. I will therefore not give any consideration to whether Oy Hartwall Ab also sought to register the mark as a figurative mark. (7)
25. In order to analyse Question 1, it is, as the Commission has stated, necessary to ask the following two questions: Firstly, whether it is relevant, for establishing the subject matter to be protected by registration, whether the trade mark is to be registered as a figurative mark or a colour mark (a) and, secondly, of what relevance is it for the assessment whether the trade mark has distinctive character, whether the trade mark is to be registered as a figurative mark or a colour mark (b).
(a) The relevance of the fact that a mark is to be registered as a figurative mark or a colour mark to establishing the subject matter of the trade mark applied for
26. To answer this question, it is necessary to describe the subject matter of a colour mark and a figurative mark, in particular what the difference between the two types of trade mark is.
27. In that connection, I note firstly that Directive 2008/95 is based on a clear premiss that there are different types of trade mark.
28. Under Article 2 of the directive, entitled ‘Signs of which a trade mark may consist’, a trade mark may consist of any signs capable of being represented graphically, provided that the sign concerned is capable of distinguishing the goods or services of one undertaking from those of others. The provision lists the examples ‘words, including personal names, designs, letters, numerals, the shape of goods or of their packaging’. (8) Although Article 2 does not contain an actual categorisation of various trade mark types, the listed signs show that trade marks can take various forms.
29. I further note that both figurative marks and colour marks can constitute trade marks within the meaning of Article 2. As regards figurative marks, they are in fact covered by the examples of ‘designs’ listed in Article 2. Colour marks, on the other hand, do not feature among the examples listed in Article 2, (9) but the Court held in the two reference judgments on colour marks, namely Libertel (10) and Heidelberger Bauchemie, (11) that colour marks can constitute trade marks within the meaning of Article 2. (12)
30. This takes me on to the central question, namely what is meant precisely by ‘colour mark’ and ‘figurative mark’ and how do the two types of trade mark differ.
31. A colour mark is a sign which consists of a colour or a combination of colours per se with no shapes or contours. (13)
32. The particular feature of registration of a colour mark is that it is the colour or combination of colours per se which is afforded protection. As an example of a colour mark I refer to the judgment in the case of Louboutin and Christian Louboutin, which was given recently by the Grand Chamber of the Court of Justice. (14) That case concerned a Benelux trade mark, consisting of the colour red, which is applied to the sole of a high-heeled shoe. The contour of the shoe was not part of the registered trade mark. (15) In the judgment, the Court confirmed that the fact that a colour is applied to a product, which thus in practice will constitute the outline of the colour, does not mean that the shape forms part of the trade mark. (16) In other words, the sole was not part of the trade mark even though the registered colour was given an outline when applied to the sole of a high-heeled shoe.
33. As the Court indicated in its judgment in Libertel, registration of colour marks provides quite comprehensive protection. The fact that the number of colours actually available is limited means that a small number of trade mark registrations for certain services or goods could exhaust the entire range of the colours available. (17)
34. As regards figurative marks, on the other hand, they consist of a figurative element. Where figurative marks are registered, it is the figurative element, as shown in the graphic representation of the mark, which is afforded protection. Where the figurative mark is in colours, it is the figurative mark, as shown in the stated colours, which is afforded protection by registration. (18)
35. As is apparent from the foregoing, the two categories of trade mark are therefore different in that a colour mark protects the right to use a certain colour or combination of colours per se, that is to say without any contours, whilst a figurative mark protects the right to use the figurative mark exactly as it is shown in the graphic representation thereof, with contours and any colours.
(b) The relevance of the fact that a trade mark is to be registered as a figurative mark or a colour mark to the assessment of the mark’s distinctive character
36. The question then arises as to whether it is of relevance to the assessment of the requirement relating to distinctive character whether the applicant seeks protection for a colour mark or a figurative mark. In my view, the answer to this question can be deduced from the Court’s settled case-law, which I will set out below.
37. It is a fundamental requirement for registration of a trade mark that the trade mark has distinctive character (Articles 2, 3(1)(b) and 3(3)). Distinctive character means that the mark must serve to identify the product or service covered by that mark as originating from a particular undertaking, and thus to distinguish that product or service from goods of other undertakings. (19) The essential function of a trade mark is therefore to guarantee the identity of the origin of the marked goods or service to the consumer by enabling him, without any possibility of confusion, to distinguish the product or service from others which have another origin. (20)
38. It is settled case-law of the Court that, whether inherent (Article 3(1)(a)) or acquired through use (Article 3(3)), the distinctive character of a mark must be assessed in relation to two parameters: on the one hand, to the goods or services covered by that mark and, on the other, to the presumed expectations within the trade circles concerned. (21)
39. The Court has further specified how the assessment of distinctive character acquired through use is to be assessed in practice. The competent authority must carry out an examination by reference to the actual situation and make an overall assessment of the evidence that the mark has, among the relevant class of persons, come to identify the goods or services concerned as originating from a particular undertaking. Moreover, that evidence must relate to use of the mark. (22) In the context of that assessment, the following items may, inter alia, be taken into consideration: the market share held by the mark in question; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant class of persons who, because of the mark, identifies goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations. (23)
40. Next, as regards the question as to what relevance the assessment of the requirement relating to distinctive character has to whether a trade mark is to be registered as a colour mark or figurative mark, the Court has held previously that Article 2 and Article 3(1)(b) and (3) of Directive 2008/95 make no distinction between different categories of trade marks. The criteria for assessing the distinctive character of colour marks, including whether that mark has acquired a distinctive character as a consequence of use, are thus in principle no different from those to be applied to other categories of trade mark, including figurative marks. (24) Therefore, stricter criteria supplementing or derogating from application of the criterion of distinctiveness cannot be laid down in respect of certain types of marks. (25)
41. I should point out, however, that it also follows from the Court’s case-law that, in respect of certain types of trade mark, which have a specific quality, account must be taken of the specific characteristics of those trade mark types. This is so inter alia in the case of colour marks, in respect of which I deduce from the Court’s case-law referred to below that account must be taken of two factors on account of colour marks’ specific characteristics.
42. Firstly, the Court has held that save in exceptional cases, in particular where markets are very specific, a colour mark does not initially have a distinctive character. (26) Colour marks seldom have distinctive character initially because consumers are not normally in the habit of making assumptions about the origin of goods solely based on their colour or the colour of their packaging. Therefore, perception of the relevant public is not necessarily the same in the case of a colour mark as it is in the case of a word or figurative mark. (27)
43. Secondly, the Court has previously ruled that there is a public interest in not unduly restricting the availability of colours for the other operators who offer for sale goods or services of the same type. (28) In assessing the potential distinctiveness of a colour mark, it is therefore also necessary to ensure that registration of the colour mark would not be contrary to that public interest. (29)
44. As is apparent from the foregoing, as a result of a mark’s specific characteristics it can therefore be more difficult in practice to establish distinctiveness in relation to marks of certain categories as compared with marks of other categories. (30) However, I should point out that the Court has also stressed that that fact cannot exempt the trade mark authorities from having to carry out an examination, on a case-by-case basis, of whether the trade mark applied for has distinctive character. (31)
45. In the light of the foregoing, I propose that the Court’s answer to the first question should be that Articles 2 and 3(1)(b) and 3(3) of Directive 2008/95 must be interpreted as meaning that it is relevant for the assessment of the requirement relating to distinctive character whether the mark is to be registered as a figurative mark or a colour mark in the sense that colour marks’ specific characteristics require that they be taken into account in assessing whether a colour mark has distinctive character. In that connection, it must be borne in mind both that a colour mark seldom has distinctive character initially and that there is a public interest in not unduly restricting the availability of colours for the other operators who offer for sale goods or services of the same type.
2. How a trade mark is to be registered where there is a discrepancy between the graphic representation of the trade mark and the choice of the trade mark category which was made in the trade mark application (Question 2)
46. I understand the second question as the referring court essentially asking how a trade mark is to be registered where there is a discrepancy between the graphic representation of the trade mark, which shows a figure, and the choice of trade mark category which was made in the application and which characterises the trade mark as a colour mark.
47. In what follows, I will explain why in the event of such a discrepancy a mark cannot, in my view, be registered either as a colour mark or a figurative mark under EU law. In that connection, I will first explain why it is essential for registering a trade mark that the trade mark’s precise subject matter can be established (a), and then explain the consequences of discrepancies in an application as in the present case (b).
(a) The need to establish the subject matter of a trade mark
48. If it is appropriate to establish the precise subject matter of the trade mark applied for, it is because under Article 2 of Directive 2008/95 it is a fundamental requirement for the registrability of a trade mark that it consist of a sign which is capable of being represented graphically. The purpose of the requirement laid down in Article 2 that any sign must be capable of being represented graphically is to establish the exact subject matter of the trade mark for which the applicant seeks protection. According to the judgment in Sieckmann, in order to fulfil its function, the graphic representation of the trade mark must essentially be clear, precise, self-contained, easily accessible, intelligible, durable and objective. (32)
49. In that judgment, the Court explained that such an interpretation is required to allow for the sound operation of the trade mark registration system. (33) On the one hand, the competent authorities must know with clarity and precision the nature of the signs of which a mark consists in order to be able to fulfil their obligations in relation to the prior examination of registration applications and to the publication and maintenance of an appropriate and precise register of trade marks. On the other hand, economic operators must, with clarity and precision, be able to find out about registrations or applications for registration made by their current or potential competitors and thus to receive relevant information about the rights of third parties. (34)
50. It is therefore on the basis of the establishment of the precise subject matter of a trade mark that all other conditions for the mark’s possible registration must be assessed, including whether the mark has distinctive character.
51. Whilst it is a fundamental requirement for all trade marks that they are capable of being represented graphically, (35) I note that the precise subject matter of certain types of trade mark cannot be established in practice solely on the basis of a graphic reproduction of the trade mark applied for. Although a graphic reproduction of a figurative mark in colours certainly shows precisely the element for which protection is sought, this is not so in the case of colour marks.
52. In the Libertel judgment, which concerned the possibility of registering a colour mark consisting of a single colour, the Court ruled that a mere sample of a colour does not per se satisfy the requirement for graphic representation laid down in Article 2, particularly since a sample of a colour may deteriorate with time (it can fade, for example). Therefore, a sample of a colour is not capable of establishing the precise subject matter of a colour mark. However, the requirement laid down in Article 2 can be satisfied if the sample of a colour is supplemented with a description of the colour mark in words, provided that that description is clear and precise, or an internationally recognised identification code as such codes may be considered to be precise. (36)
53. As regards colour marks which consist of combinations of colours, the Court further ruled in its judgment in Heidelberger Bauchemie that a combination of colours in respect of which registration is sought must — in order to satisfy the requirement relating to clarity laid down in Article 2 — also be systematically arranged by associating the colours concerned in a predetermined and uniform way. (37) The purpose of the systematic arrangement is precisely to establish the particular combination in which the colours are included. (38)
54. I would add in this regard that, before an authority can determine whether the subject matter of a colour mark applied for can be established with the requisite clarity, as follows from the judgments in Libertel (39) and Heidelberger Bauchemie, (40) it must naturally be a requirement that the authority can establish that the mark concerned is a colour mark.
55. In the present case there appears to be a discrepancy in Oy Hartwall’s application in this regard, as the referring court’s second question also indicates. Whilst the graphic representation of the trade mark applied for shows a mark with contours in the form of a figure (a blue band with a thin grey line around the edges), Oy Hartwall indicated in the accompanying description (with reference to international codes for the colours used) and categorisation that the mark concerned is a colour mark.
56. As regards the graphic representation of the colour mark applied for, I note that in principle it may be possible to represent colour marks graphically with contours. That is so where the graphic representation illustrates how the colour mark is to be applied to the goods or services of the undertaking concerned. By way of example, I refer to the abovementioned judgment in Louboutin and Christian Louboutin. (41) The graphic representation of the colour mark in that case, which is reproduced at paragraph 8 of the judgment, showed an image of a high-heeled shoe to whose sole the colour red at issue was applied. The description of the colour mark clarified that the contour of the shoe was not part of the trade mark and was merely intended to show the positioning of the mark. Although the graphic representation of the mark contains contours (the shape of the shoe, including the shape of the sole), these contours were not part of the mark, which the Court also confirmed in that case, as stated at point 32 of this Opinion.
57. If the trade mark applied for in the present case were presented graphically in a similar manner, the graphic representation would have to show how the colour mark for which registration was sought was applied to Oy Hartwall’s products, which in this case consist of bottles of water. However, the graphic representation of the trade mark does not show a bottle of water, but a band, as the Commission and the Finnish Government also point out. In the light of the foregoing, I conclude that there is a discrepancy in Oy Hartwall’s trade mark application since the contours used are not even capable of showing how the colour mark is to be used on the products indicated.
(b) The consequences of discrepancies in the trade mark application
58. In my view, and as also argued by the Commission and the Finnish Government, Article 2 of Directive 2008/95 precludes a colour mark from being registered in the event of a discrepancy such as that in the present case.
59. It is not possible to establish, on the basis of the trade mark application, whether the precise subject matter of the application is a colour mark or a figurative mark. It is therefore uncertain in relation to which subject matter the other substantive conditions laid down in the directive, including the requirement relating to distinctive character, are to be assessed. Furthermore, the authorities use the different categories of trade mark to navigate the trade mark register. This is also true of the Finnish register, where I can see that searches can be made in various trade mark categories, including the categories ‘figurative marks’ and ‘colour marks’.
60. In that connection, it would create confusion for the public and competing undertakings if the trade mark were registered as a colour mark but in its graphic representation appeared as a figurative mark. It would thus be unclear what element — the colour mark or the figurative mark — was protected by the registration. Consequently, I concur with the Commission and the Finnish Government that the objective of the requirement relating to graphic representation laid down in Article 2, as specified in the Sieckmann judgment, (42) that is to say that the subject matter of the trade mark can be established clearly and precisely, thus cannot be attained in the case of an application such as that in the present case.
61. Such an interpretation of Article 2 is also supported by the Court’s judgment in the Shield Mark case. (43) That case concerned, inter alia, the conditions on which a sound sign (44) is capable of being represented graphically within the meaning of Article 2 of the directive. In that case the Court ruled inter alia that a sign, whose graphic representation is composed of musical notes or written language, cannot be registered as a sound mark where the applicant has failed to state in the application for registration that the sign in question must be understood as being a sound sign. As the Court held, in such a case where a trade mark is registered, the competent registration authority and the public are entitled to consider that it is a word mark or a figurative mark as represented graphically in the application for registration. (45)
62. For the reasons I set out above in point 59 of this Opinion, I consider that the same considerations apply to a trade mark application where the graphic representation shows a figure, but the trade mark is stated as being a colour mark in the accompanying categorisation and description. Although the Shield Mark case concerns a lack of clarity in the application and not an actual discrepancy, the outcome in the Shield Mark case must apply all the more in the case of a discrepancy. (46)
63. Where the national authorities are to establish the precise subject matter of a trade mark applied for, and the applicant seeks protection for a colour mark, it is therefore essential that the trade mark application is in compliance, that is to say that the trade mark — in its graphic representation, including the trade mark categorisation and accompanying description — is to be registered as a colour mark. Only in this way is it possible for the authorities and the public to know, first, that the applicant is seeking protection for a colour mark and not a figurative mark and, second, to establish the precise subject matter of the colour mark.
64. I therefore propose that the Court’s answer to the second question should be that Article 2 of Directive 2008/95 must be interpreted as precluding a trade mark from being registered where, on account of discrepancies in the application, it is not possible to establish the precise subject matter in respect of which the applicant seeks protection. This is so, for example, in the case of a trade mark application for registration of a colour mark, whose graphic representation, however, shows a figurative mark.
3. Practice of the Patentti- ja rekisterihallitus (Question 3)
65. I understand the third question as the referring court essentially asking — if the answer to the second question is in the affirmative and it is thus possible in principle to register the trade mark at issue as a colour mark — whether the Court’s case-law on distinctive character in respect of colour marks applies to such a trade mark and, if so, whether the practice of the Patentti- ja rekisterihallitus is then consistent with that case-law.
66. Given that I have proposed that the Court should answer the second question in the negative, there is no need to answer the third question. However, should the Court answer the second question in the affirmative, I will set out the following alternative considerations.
67. The question relates to the assessment by the Patentti- ja rekisterihallitus as to whether the trade mark applied for had acquired distinctive character through use. In that connection, the order for reference shows that the grounds for the Patentti- ja rekisterihallitus’ refusal of the application stated inter alia that ‘according to the normal practice of the [Office], registration of a sole and exclusive right to certain colours cannot be permitted unless there is solid evidence to show that the colours applied for have acquired distinctive character through lasting and extensive use in relation to the goods in respect of which registration is sought’. (47)
68. To answer that question, it is first necessary to determine whether the Court’s case-law on distinctive character in respect of colour marks (the judgments in Libertel (48) and Heidelberger Bauchemie (49)) applies to such a mark.
69. Since the question is based on the assumption that the trade mark concerned is a colour mark, and the subject matter of that mark is therefore assumed to be a colour or a combination of colours with no contours, the question must, as indicated by the Finnish Government and the Commission, be answered in the affirmative.
70. Specifically, this means that, in assessing whether a colour mark has distinctive character, account must be taken of the colour mark’s specific characteristics. As stated at paragraphs 42 to 43 of this Opinion, this implies, first, that account must be taken of the fact that a colour mark seldom has inherent distinctive character and, second, that account is taken of the public interest in not unduly restricting the availability of colours for the other operators. (50)
71. Secondly, it is necessary to consider whether the practice of the Patentti- ja rekisterihallitus is consistent with the Court’s case-law on colour marks.
72. It is for the referring court to make that determination, having regard to the elements of the Court’s case-law which I set out above at points 38 and 44 of this Opinion, and all the relevant factual information on the practice of the Patentti- ja rekisterihallitus. (51)
73. As regards the distinctive character acquired through use, it must be stressed that the competent authority must carry out an examination by reference to the actual situation and make an overall assessment of all the evidence that the mark has come to identify the goods or services concerned as originating from a particular undertaking. (52) In that connection, it follows from the Court’s judgment in Oberbank that it is contrary to Directive 2008/95 for the assessment of a colour mark’s distinctive character acquired through use to be based solely on the results of a consumer survey. In that case, the Court held that even though a consumer survey may be one of the factors in the assessment, the results of a consumer survey cannot be the sole decisive criterion. (53)
74. I therefore propose, in the alternative, that the Court’s answer to the question referred should be that, if a trade mark is to be registered as a colour mark, in assessing whether the trade mark applied for has distinctive character, account must be taken of the colour mark’s specific characteristics. In this regard, it should be borne in mind, first, that colour marks seldom have distinctive character initially and, second, that there is a public interest in not unduly restricting the availability of colours for the other operators who offer for sale goods or services of the same type. If the competent authorities consider that the colour mark applied for has inherent distinctive character, there is no need to demonstrate the use made of the mark. If, on the other hand, the colour mark does not have inherent distinctive character, it is necessary to assess whether the mark has acquired distinctive character through use. In making that assessment, an examination by reference to the actual situation must be carried out and an overall assessment must be made of the evidence that the mark has come to identify the goods or services concerned as originating from a particular undertaking. This evidence must relate inter alia to the use which has been made of the mark and the following items may be taken into consideration in that assessment: the market share held by the mark in question; how intensive, geographically widespread and long-standing use of that mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant class of persons who, because of the mark, identifies goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations.
V. Conclusion
75. In the light of the foregoing, I propose that the Court should give the following answers to the questions referred by the Korkein hallinto-oikeus (Supreme Administrative Court, Finland):
(1) For the interpretation of Article 2 of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks and the condition relating to the distinctive character of a trade mark within the meaning of Article 3(1)(b) and 3(3) thereof, it is of relevance whether the mark is to be registered as a figurative mark or a colour mark in the sense that the specific characteristics of colour marks require that they be taken into account in assessing whether a colour mark has distinctive character. In that connection, it must be borne in mind both that a colour mark seldom has distinctive character initially and that there is a public interest in not unduly restricting the availability of colours for the other operators who offer for sale goods or services of the same type.
(2) Article 2 of Directive 2008/95 must be interpreted as precluding registration of a trade mark where, on account of discrepancies in the application, it is not possible to establish the precise subject matter in respect of which the applicant seeks protection. This is so, for example, in the case of a trade mark application for registration of a colour mark, whose graphic representation, however, shows a figurative mark.