Case T-378/07

CNH Global NV

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)

(Community trade mark – Application for a Community trade mark consisting of a combination of the colours red, black and grey applied to the exterior surfaces of a tractor – Absolute ground for refusal – No distinctive character acquired through use – Article 7(3) of Regulation (EC) No 40/94 (now Article 7(3) of Regulation (EC) No 207/2009))

Summary of the Judgment

1.      Community trade mark – Definition and acquisition of the Community trade mark – Absolute grounds for refusal – Trade marks which are devoid of any distinctive character, descriptive or commonplace – Exception – Acquisition of distinctive character through use – Definition of the relevant public

(Council Regulation No 40/94, Art. 7(3))

2.      Community trade mark – Definition and acquisition of the Community trade mark – Absolute grounds for refusal – Trade marks which are devoid of any distinctive character, descriptive or commonplace – Exception – Acquisition of distinctive character through use – Criteria for assessment

(Council Regulation No 40/94, Art. 7(3))

3.      Community trade mark – Definition and acquisition of the Community trade mark – Absolute grounds for refusal – Trade marks which are devoid of any distinctive character, descriptive or commonplace – Exception – Acquisition of distinctive character through use – Use established throughout the Community

(Council Regulation No 40/94, Art. 7(3))

1.      The acquisition of distinctive character through use, for the purposes of Article 7(3) of Regulation No 40/94 on the Community trade mark, requires that at least a significant proportion of the relevant section of the public identifies the goods or services concerned as originating from a particular undertaking because of the mark. That identification must be as a result of the use of the sign as a trade mark and thus as a result of the nature and effect of it, which make it capable of distinguishing the goods or services concerned from those of other undertakings.

The definition of the relevant public is linked to an examination of the intended purchasers of the goods concerned, because it is in relation to those purchasers that the mark must perform its essential function. Consequently, such a definition must be arrived at by reference to the essential function of trade marks, namely to guarantee the identity of the origin of the goods or service covered by the mark to consumers or end-users by enabling them, without any possibility of confusion, to distinguish the goods or service from others which have another origin.

(see paras 28-29, 38)

2.      In determining whether a sign has acquired distinctive character in consequence of the use which has been made of it within the meaning of Article 7(3) of Regulation No 40/94 on the Community trade mark, 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, and thus to distinguish those goods or services from those of other undertakings.

For the purposes of assessing whether a mark has acquired distinctive character through use, the following items may be taken into consideration: the market share held by the mark; 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, identify goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations.

(see paras 31-32)

3.      It must be established that the mark applied for has acquired distinctive character through use for the purposes of Article 7(3) of Regulation No 40/94 on the Community trade mark throughout the Community, as it existed at the time when the application for registration of the Community trade mark was filed, with the exception of the part of the Community in which the mark applied for already had such a character ab initio. It is therefore in that territory, which includes those of the 10 new Member States which acceded to the European Union following the enlargement of 1 May 2004, that at least a significant proportion of the relevant section of the public must be able to identify the goods concerned as originating from a particular undertaking because of the mark applied for.

(see para. 48)