Case T-97/08

KUKA Roboter GmbH

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 shade of orange – Absolute ground for refusal – Lack of distinctive character – Article 7(1)(b) of Regulation (EC) No 40/94 (now Article 7(1)(b) of Regulation (EC) No 207/2009))

Summary of the Judgment

1.      Community trade mark – Appeals procedure – Appeals before the Community judicature – Legality of a decision of a Board of Appeal – Challenged by the adducing of new facts – Condition governing admissibility

(Council Regulation No 40/94, Art. 63)

2.      Community trade mark – Definition and acquisition of the Community trade mark – Signs capable of constituting a mark – Colours or combinations of colours – Condition – Distinctive character – Account taken of the public interest in not unduly restricting the availability of colours

(Council Regulation No 40/94, Art. 4)

3.      Community trade mark – Definition and acquisition of the Community trade mark – Absolute grounds for refusal – Marks devoid of any distinctive character

(Council Regulation No 40/94, Art. 7(1)(b))

4.      Actions for annulment – Pleas in law – Misuse of powers – Meaning

1.      The legality of a decision of the Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) cannot be called into question by pleading new facts before the General Court unless it is proved that the Board of Appeal should have taken those facts into account of its own motion during the administrative procedure before adopting any decision in the matter.

(see para. 11)

2.      In the case of a colour, distinctiveness without any prior use is inconceivable save in exceptional circumstances, particularly where the number of goods or services for which the mark is claimed is very restricted and the relevant market very specific.

To the extent that trade mark rights constitute an essential element in the system of undistorted competition established by the Treaty, the rights and powers that trade marks confer on their proprietors must be considered in the light of that objective. However, in the light of the fact that a trade mark confers on its proprietor an exclusive right, in relation to certain goods and services, that allows him to monopolise the sign registered as a trade mark for an unlimited period, the possibility of registering a trade mark may be limited for reasons relating to the public interest. In that regard, the fact that the number of colours actually available is limited means that a small number of trade mark registrations for certain goods or services could exhaust the entire range of the colours available. Such an extensive monopoly would be incompatible with a system of undistorted competition, in particular because it could have the effect of creating an unjustified competitive advantage for a single trader. It must therefore be acknowledged that there is, in trade-mark law, 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 as those in respect of which registration is sought.

(see paras 33-35)

3.      A sign consisting in a shade of orange, for which registration is sought in respect of ‘articulated robots to handle, treat and weld, with the exception of cleanroom robots, medical robots, and robots to apply lacquer; parts for the above goods’ within Class 7 of the Nice Agreement, is devoid of distinctive character within the meaning of Article 7(1)(b) of Regulation No 40/94 on the Community trade mark.

The requirement of availability of colours, which has an influence on the interpretation of Article 7(1)(b) of that regulation, tends to constitute, except in exceptional situations, a bar to registration of a mark consisting of a colour. Evidence has not been submitted allowing it to be held that there are exceptional circumstances and, in particular, that the number of goods for which the mark is applied for is limited to such an extent and that the market is specific to such an extent that, first, a colour per se would be capable of indicating the commercial origin of the goods of that colour and that, secondly, its monopoly would not create an unjustified competitive advantage in favour of the proprietor of that mark, contrary to the public interest.

The specific characteristics of the relevant sector – the applicant insisting in particular on the fact that the robots covered by the mark applied for are very specific goods, that they are long-term capital assets, expensive, used for highly specialised purposes and that the purchase of a robot requires a significant amount of customisation on the premises of the purchaser – do not alter the fact that it is usual, in the sector of the goods in question, for them to be available in a great many colours. Concerning that point, the applicant alleges itself that the customers choose the colours of the goods at the time of the order. It must therefore be held that, in the sector concerned, a professional public which is particularly attentive is usually confronted with the goods in question in various colours, without those colours being perceived as indicating the commercial origin of those goods.

(see paras 39, 44, 46-47)

4.      The concept of misuse of powers has a precisely defined scope in European Union law and refers to cases where an administrative authority has used its powers for a purpose other than that for which they were conferred on it. A decision may amount to a misuse of powers only if it appears, on the basis of objective, relevant and consistent evidence, to have been taken for purposes other than those stated.

(see para. 65)