JUDGMENT OF THE GENERAL COURT (Sixth Chamber)
10 September 2015 (*)
(Community trade mark — Application for a Community figurative mark representing white dots on a yellow background — Absolute ground for refusal — No distinctive character — Article 7(1)(b) of Regulation (EC) No 207/2009)
In Case T‑143/14,
EE Ltd, established in Hatfield (United Kingdom), represented by P. Brownlow, Solicitor,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by M. Rajh, acting as Agent,
defendant,
ACTION brought against the decision of the Second Board of Appeal of OHIM of 27 November 2013 (Case R 703/2013-2), relating to an application for registration as a Community trade mark of a figurative sign representing white dots on a yellow background,
THE GENERAL COURT (Sixth Chamber),
composed of S. Frimodt Nielsen (Rapporteur), President, F. Dehousse and A.M. Collins, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 3 March 2014,
having regard to the response lodged at the Court Registry on 15 May 2014,
having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge-Rapporteur, to rule on the action without an oral procedure pursuant to Article 135a of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the dispute
1 On 30 November 2012, Everything Everywhere Ltd, now known as EE Ltd (‘the applicant’), filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).
2 The mark in respect of which registration was sought is the following figurative sign:
3 The goods and services in respect of which registration was sought are in Classes 7, 9, 16, 25, 35 to 39, 41, 42 and 45 of 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.
4 The goods and services designated by the mark applied for cover, inter alia, automatic vending machines, computers, computer software, electronic devices, paper, clothing, computer games, telecommunications and various computer services.
5 By letter of 29 January 2013, in reply to the examiner’s initial objections, the applicant specified that the mark applied for consisted of ‘the combination of the specific Pantone colour yellow No 012 with white particles in a certain infinite pattern’.
6 By decision of 27 February 2013, the examiner rejected the application for registration in respect of all of the goods and services at issue, on the ground that the trade mark applied for was devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009.
7 On 15 April 2013, the applicant filed a notice of appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the examiner’s decision.
8 By decision of 27 November 2013 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the appeal on the ground that the sign applied for was inherently devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009.
9 First of all, the Board of Appeal pointed out that the mark applied for covered an extremely wide range of goods and services with very different natures and purposes and addressed both average consumers and professionals in many sectors, inter alia, in the computer and telecommunications sectors.
10 Secondly, the Board of Appeal stated that the Pantone colour yellow No 012, in itself, would not be perceived as an indication of the origin of the goods and services concerned. As regards the ‘white particles in a certain infinite pattern’, the Board of Appeal took the view that that element did not constitute a distinctive feature of the mark applied for either, since it may be applied to the surface of the goods concerned, may be perceived as having a mere decorative function and is unlikely to be remembered due to its simplicity and the random positioning of the particles of which it is made up. Consequently, the Board of Appeal concluded that, on account of its simple and banal composition, the representation of the pattern at issue was likely to be perceived as purely ornamental in connection with all the goods and services concerned. Therefore, it was not capable of serving as an indicator of commercial origin.
11 Thirdly, the Board of Appeal observed that the evidence adduced by the applicant failed to substantiate its claim that colours are generally perceived as an indication of the commercial origin of the goods and services concerned.
12 Furthermore, the Board of Appeal noted that no plea in law based on Article 7(3) of Regulation No 207/2009 had been raised in the present case and therefore, in the absence of extensive use, the mark applied for could not function as a trade mark.
Forms of order sought
13 The applicant claims that the Court should:
– annul the contested decision;
– order OHIM to pay the costs.
14 OHIM contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
15 In support of its claims, the applicant relies on a single plea in law, alleging an infringement of Article 7(1)(b) of Regulation No 207/2009. The applicant advances three grounds of complaint in that regard.
16 First, the applicant submits that the Board of Appeal failed to assess the sign as a whole. It claims that the mark applied for is more than a dotted pattern on a yellow background and in fact consists of a pattern comprising a solid uniform background colour with different sized white particles spaced equidistant from each other in a square grid formation which, due to the placement and sizing of the individual particles, creates a three-dimensional impression. The applicant maintains that, in the present case, the Board of Appeal individually assessed the distinctive character of the colour yellow, of the colour white and of the pattern, and erroneously concluded that, since each of those elements was in itself devoid of distinctive character, the combination of those features taken as a whole was also devoid of distinctive character. The applicant, however, claims that the unusual colour and pattern combination is not commonplace; rather, it is striking and atypical. Further, the mark applied for is not commonplace within the telecommunications sector and such a combination is therefore capable of serving as an indicator of the commercial origin of the goods and services.
17 Secondly, the applicant notes that the Board of Appeal did not consider each of the goods and services covered by the application individually and instead considered them as a whole. The applicant submits that services, by nature, have no colour, and that colours do not confer any substantive value on a service. Therefore, the relevant public is able to distinguish between the use of a colour as mere decoration and its use as an indication of the commercial origin of a service, particularly within the telecommunications sector where the unusual colour and pattern combination at issue is not commonplace and will enable the applicant’s goods and services to immediately be distinguished from those of another undertaking.
18 Thirdly, the applicant maintains that the evidence it annexed to its appeal against the examiner’s decision demonstrated that network operators and internet service providers have adopted the use of colours as indicators of the origin of their goods and services. Accordingly, it claims that consumers are able to appreciate that the sign applied for is an indication that the goods or services concerned originate from a specific network provider, and are accustomed to doing so. Thus, even though the sign at issue may serve technical or decorative functions, it also functions as an indicator of commercial origin.
19 OHIM disputes the merits of the applicant’s arguments.
20 As a preliminary point, it should be recalled that under Article 7(1)(b) of Regulation No 207/2009, ‘trade marks which are devoid of any distinctive character’ are not to be registered.
21 For a trade mark to possess distinctive character, for the purposes of that article, it must serve to identify the goods and services in respect of which registration is sought as originating from a particular undertaking, and thus to distinguish those goods and services from the goods and services of other undertakings (judgment of 12 November 2008 in GretagMacbeth v OHIM (Combination of 24 coloured squares), T‑400/07, EU:T:2008:492, paragraph 32).
22 Accordingly, the marks covered by Article 7(1)(b) of Regulation No 207/2009 are those which are regarded as incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services in question, thus enabling the consumer who acquired them to repeat the experience if it proves to be positive, or to avoid it if it proves to be negative, on the occasion of a subsequent acquisition (judgment of 15 September 2009 in Wella v OHIM (TAME IT), T‑471/07, ECR, EU:T:2009:328, paragraph 14).
23 At this point, it should be noted that Article 7(1)(b) of Regulation No 207/2009 does not distinguish between different categories of trade marks. Consequently, colours or colour combinations per se are capable of constituting Community trade marks in so far as they are capable of distinguishing the goods or services of one undertaking from those of another. However, the fact that a category of signs is, in general, capable of constituting a trade mark does not mean that all the signs belonging to that category necessarily possess distinctive character for the purposes of Article 7(1)(b) of Regulation No 207/2009 in relation to a specific product or service (see, by analogy, judgment of 9 July 2003 in Stihl v OHIM (Combination of orange and grey), T‑234/01, ECR, EU:T:2003:202, paragraphs 26 and 27).
24 Similarly, it should be noted that Article 7(1)(b) of Regulation No 207/2009 does not differentiate according to types of signs. Nevertheless, the perception of the relevant public is not necessarily the same in the case of a sign composed of a colour or colour combination per se as it is in the case of a word or figurative mark composed of a sign that bears no relation to the appearance of the goods that it identifies. While the public is accustomed to perceiving word or figurative marks as instantly identifying the commercial origin of the goods, the same is not necessarily true where the sign forms part of the look of the goods in respect of which registration of the sign is sought (see, by analogy, judgment in Combination of orange and grey, cited in paragraph 23 above, EU:T:2003:202, paragraph 29).
25 In those circumstances, only a mark which departs significantly from the norm or customs of the sector and thereby fulfils its essential function of indicating origin is not devoid of any distinctive character for the purposes of Article 7(1)(b) of Regulation No 207/2009 (see, by analogy, judgment of 22 June 2006 in Storck v OHIM, C‑25/05 P, ECR, EU:C:2006:422, paragraph 28).
26 That case-law, which was developed in relation to three-dimensional trade marks consisting of the appearance of the product itself, also applies where, as in the present case, the mark applied for is a figurative mark consisting of a coloured pattern without any contours. In such a case, the mark likewise does not consist of a sign that bears no relation to the appearance of the products it identifies (see, by analogy, judgment in Storck v OHIM, cited in paragraph 25 above, EU:C:2006:422, paragraph 29).
27 Lastly, it should be pointed out that the distinctive character of a sign may be assessed only by reference to, first, the goods or services in respect of which registration is sought and, secondly, the relevant public’s perception of the sign (judgment in Combination of 24 coloured squares, cited in paragraph 21 above, EU:T:2008:492, paragraph 37).
28 It is in the light of those considerations that the single plea in law, alleging infringement of Article 7(1)(b) of Regulation No 207/2009, should be examined.
29 In the present case, it must first be pointed out that the mark applied for designates a wide range of different goods and services. Those goods and services cover, in most cases, all the wide categories of class headings of goods and services in respect of which registration was sought, in addition to specific goods in each of those classes. For example, as regards services in Class 38, the mark applied for refers to the heading of that class (‘telecommunications’) as well as various specific telecommunication services. Indeed, in its application initiating proceedings the applicant acknowledges that its application for registration covers a wide range of goods and services, as was stated in paragraph 26 of the contested decision.
30 Furthermore, it should also be noted that the wide variety of goods and services covered in the application address both professionals in the relevant sectors and the general public. Accordingly, the degree of attention of those groups of relevant consumers will vary from average to high. That conclusion has not been contested by the applicant.
The complaint alleging failure to assess the sign applied for as a whole
31 It is against that background that the applicant alleges, by its first complaint, that the sign applied for should not have been assessed on the basis of whether or not the colour yellow, the colour white or the pattern which constitute the sign possess distinctive character but on the basis of an overall assessment. According to the applicant, such a global assessment will make it possible to identify the commercial origin of the goods and services covered by the application for registration.
32 It is, however, clear that such a claim cannot suffice to call into question the reasoning set out by the Board of Appeal in the contested decision, which explains in detail why it concluded that the mark applied for was devoid of any distinctive character for the purposes of Article 7(1)(b) of Regulation No 207/2009.
33 In the first place, the Board of Appeal pointed out that, even where the colours of a trade mark applied for meet the degree of precision required by case-law, it does not necessarily follow that the mark is distinctive. In that regard, the Board of Appeal rightly noted that it is the overall impression conveyed by that combination to the relevant public that must be analysed, which is not incompatible with an examination of each of the sign’s individual features in turn (judgment of 19 September 2001 in Procter & Gamble v OHIM (Square tablet, white with green speckles and pale green), T‑118/00, EU:T:2001:226, paragraph 59, and order of 14 May 2012 in Timehouse v OHIM, C‑453/11 P, EU:C:2012:291, paragraph 41).
34 Such an analysis is particularly relevant where the characteristics of the individual features are important for the purpose of the global assessment. Where a sign is composed of a number of features, each one of which is considered to be devoid of distinctive character, the distinctive character of the sign as a whole depends on whether the overall impression is greater than the mere sum of its parts. The identification and analysis of the various components is therefore a necessary step in the assessment process.
35 Hence, first, in so far as the applicant claims that the yellow colour (Pantone No 012) possesses distinctive character, the Board of Appeal correctly pointed out that, according to the case-law of the Court of Justice, whilst colours are capable of conveying certain associations of ideas, and of arousing feelings, they possess little inherent capacity for communicating specific information, especially since they are commonly and widely used, because of their appeal, in order to advertise and market goods or services, without any specific message (judgment in Libertel, cited in paragraph 33 above, EU:T:2003:244, paragraph 40).
36 In the present case, it should also be noted that the Pantone colour yellow No 012 looks quite commonplace. That colour is not, in itself, so exceptional as to be perceived as particularly striking and memorable in any of the sectors concerned.
37 Accordingly, the Board of Appeal was right to find that the colour yellow Pantone No 012, in itself, lacked distinctive character in relation to the goods and services at issue. Moreover, that conclusion has not been contested by the applicant.
38 Secondly, the Board of Appeal was also right to find that the presence of white particles in a certain infinite pattern did not constitute a distinctive feature of the mark applied for, on the three grounds set out in paragraphs 30 to 41 of the contested decision.
39 First of all, the Board of Appeal was correct to state that, in principle, a design such as the pattern at issue, applied to the surface of goods, could be a Community trade mark only if it were capable of distinguishing the goods or services of one undertaking from those of another. In the present case, the pattern in question may be applied to a large number of the goods covered by the trade mark application. From that perspective, the relevant public will not be accustomed to regarding pattern designs (such as that at issue) applied to the surface of the goods concerned as an indication of the commercial origin of those goods. Accordingly, the design of the pattern in question will not be immediately recognisable as an indication of the commercial origin of the goods; it will rather be perceived as an external component and, therefore, as non-distinctive.
40 Next, the Board of Appeal was also right to observe that the presence of ‘white particles in a certain infinite pattern’ may be perceived by the relevant public as having a mere decorative function. Due to its simple and banal composition, the pattern in question is likely to be perceived as purely ornamental in connection with all the goods and services concerned. The pattern can be used either on the exterior of the goods covered by the application, on their surface or packaging, or in advertising for those goods, or in letterheads, printed matter, electronic publications or internet sites, to promote the services covered by the mark applied for. Accordingly, the pattern will not be perceived as a distinctive feature and the relevant public will not regard it as an indicator of the commercial origin of all the goods and services at issue.
41 Lastly, when considering the use of particles arranged in a random pattern, the Board of Appeal was also entitled to consider that the pattern in question was a feature which the relevant public will not be able to commit to memory and, therefore, it cannot be regarded as a feature indicating the commercial origin of the goods and services concerned. The representation at issue is capable of identifying the origin of the mark only if it contains features which distinguish it from other similar representations and attract the consumer’s attention (see, by analogy, judgment in Combination of 24 coloured squares, cited in paragraph 21 above, EU:T:2008:492, paragraph 45). A contrario, no distinctive character is endowed on the mark by figurative and graphic elements which are so minimal in nature as to not possess any feature allowing the mark in which they are incorporated to fulfil its essential function in relation to the goods and services in question, in particular in terms of fancifulness or as regards the way in which they are combined. In the present case, the pattern at issue is not only banal and minimal, but is also characterised by a random arrangement of its constituent elements (the particles). The design claimed is not, therefore, capable of being easily and instantly committed to memory by the target public as a distinctive sign.
42 Thirdly, it should also be noted that, for the reasons set out in paragraph 42 et seq. of the contested decision, the Board of Appeal rightly pointed out that the mark could be perceived not only as a combination of colour and pattern, as claimed by the applicant, but also as a colour in itself.
43 Indeed, the Board of Appeal was entitled to observe that, when faced with the whole sign in question, a not inconsiderable section of the relevant public, in particular average consumers with a normal level of attention, may not notice the presence of the particles on the yellow background. That section of the relevant public will see only the colour yellow (Pantone No 012), whereas the white particles will be disregarded. In such circumstances, the sign at issue will be perceived only as a banal combination of a commonplace yellow background and a pattern made up of particles which are hardly visible randomly placed on that yellow background, with both features lacking any distinctive character in relation to the goods and services at issue.
44 In that regard, the Board of Appeal was justified in noting that, when assessing distinctiveness under Article 7(1)(b) of Regulation No 207/2009, it had to assume that the mark would be put to normal use in connection with the goods and services applied for. The mark could, for example, be displayed on the goods themselves. It could be used in advertisements placed by the applicant in newspapers or magazines, or in advertisements that appear on roadside hoardings. It could appear on the screen in a television advertisement. It could be used alone or in conjunction with another trade mark. Such a sign possesses distinctive character only if there are reasonable grounds for believing that consumers will notice the sign, will assume that it signifies that the goods and services in connection with which it is being used are provided by a specific undertaking, and will remember the sign on future occasions.
45 The perception described above is all the more plausible since, as OHIM observed in its response, the white particles are placed on a yellow background without any contours. Apart from the fact that the colour white is achromatic and, as such, intrinsically unsuitable for the purpose of attracting the public’s attention, the contrast between yellow and white is too tenuous to ensure that the public will discern a pattern.
46 In the present case, the Board of Appeal was therefore correct to take the view that, in that context, the sign at issue will not be perceived as a sign denoting a connection with a specific undertaking since it is the mere banal combination of two non-distinctive and barely memorable or, in some cases, barely noticeable, features.
47 In the second place, in addition to the foregoing determinations, the Board of Appeal also assessed, albeit briefly, the distinctiveness of the mark applied for as a whole, contrary to what the applicant claims in its first ground of complaint. That is clear from both paragraph 16 of the contested decision, which states that it is necessary to carry out an overall assessment of the impression conveyed by the mark applied for — with that assessment being carried out first with regard to the relevant features of the mark and subsequently with regard to the combination of the different features assessed — as well as from paragraph 54 of the contested decision, in which the Board of Appeal concluded that the sign at issue, ‘taken as a whole’, would not enable the relevant public to perceive the sign as distinctive.
48 Following that assessment, the Board of Appeal was right to find that the sign at issue will not be perceived as a sign denoting a connection with a specific undertaking since it is the mere banal combination of two non-distinctive and barely memorable or, in some cases, barely noticeable, features.
49 In any event, the applicant has provided no evidence capable of establishing what could be considered ‘unusual’ or ‘particular’ in the mere combination of a pattern which is as basic and commonplace as the one used in the present case and a banal yellow background. The applicant simply makes general statements in that regard.
50 Likewise, for the reasons set out in paragraph 56 of the contested decision, the Board of Appeal rightly took the view that its reasoning was not called into question by the applicant’s argument that in the ‘telecommunications sector, consumers are able to identify the origin of goods and services on the basis of a colour’ since it is common practice for mobile network operators and internet service providers to use their own distinct colour (or colour combination) on their goods and services. On that point, the applicant cannot merely repeat its earlier argument without seeking to refute the arguments put forward by the Board of Appeal by way of response to the applicant’s argument, citing relevant case-law.
51 In the third place, it should be noted that, in its description of the pattern before the Court, the applicant has additionally stated that it creates a three-dimensional impression. Further to the description referred to in paragraph 5 above, which served as a framework for the Board of Appeal’s assessment, the applicant now describes the sign applied for as follows: ‘the mark consists of a pattern comprising a solid uniform background colour with different sized white particles spaced equidistant from each other in a square grid formation which, due to the placement and sizing of the individual particles, creates a three-dimensional impression’. It even describes that three-dimensional impression as ‘striking’.
52 Contrary to what is contended by OHIM, that latest description of the sign cannot be regarded as constituting a new argument which should be dismissed as inadmissible. In that regard, OHIM cites case-law to the effect that matters of law relied on before the Court which have not been raised previously before the bodies of OHIM are inadmissible, in so far as consideration of those matters by those bodies was not essential for the purpose of resolving the dispute before them (judgments of 17 October 2006 in Hammarplast v OHIM — Steninge Slott (STENINGE SLOTT), T‑499/04, EU:T:2006:324, paragraph 20, and 14 February 2008 in Usinor v OHIM — Corus UK (GALVALLOY), T‑189/05, EU:T:2008:39, paragraph 20). In that respect, OHIM considers that providing a description of the figurative mark is not a mandatory requirement and, since the applicant did not claim any specific attributes, the Board of Appeal had the discretion to assess the mark’s distinctiveness on the basis of its appraisal of the image provided and the claims put forward by the applicant.
53 However, it is clear that the description presented by the applicant is not an entirely new description; rather, it is a mere amendment of the previous description and constitutes an amplification of it in the light of the reasoning set out by the Board of Appeal in the contested decision.
54 Nevertheless, the amended description of the mark applied for demonstrates, once again, that the applicant is not entirely sure what exactly its sign represents. The difference between the description presented before OHIM and that presented before the Court increases the confusion and uncertainty as to what the sign truly represents. In any event, such a difference confirms the Board of Appeal’s conclusion that the sign is too abstract and imprecise and is not, therefore, capable of being ‘easily and instantly recalled by the relevant public as a distinctive sign’.
55 In any event, contrary to the applicant’s contentions, the Board of Appeal went on to carry out an even deeper analysis of the distinctive character of the pattern, pointing out that it could be perceived as light showing through a yellow screen (see paragraph 53 of the contested decision), and concluded, without being challenged in that regard by the applicant in the present proceedings, that that would not be sufficient to render the mark applied for distinctive, since the impression conveyed by the design would not be perceived as being fixed or set and would not therefore enable the applicant’s goods to be distinguished from those having another commercial origin.
56 Applying the reasoning of the Board of Appeal, even if the ‘three-dimensional effect’ claimed by the applicant before the Court were taken into account, the conclusions of the assessment would remain the same. The arguments put forward by the Board of Appeal when assessing the possible perception of the sign as rays of light showing through a yellow screen also apply to the three-dimensional effect claimed. If the pattern is applied to the surface of goods, its effect will be imprecise on account of the different sizes of the particles or the different angles from which it will be seen. The pattern will also be banal when used in promotional material or as a background on internet sites, computers or screens. The pattern is devoid of any particular characteristic capable of immediately seizing the attention of the relevant public as if it were an indication of the commercial origin of the goods and services at issue.
57 Consequently, the Board of Appeal was correct to conclude, at the end of the abovementioned reasoning and in the context of a global assessment of the individual features which may be taken into account, that ‘the combination of the specific Pantone colour yellow No 012 with white particles in a certain infinite pattern’ was nothing more the sum of its banal and non-distinctive features and the sign applied for, as a whole, could not function as an indicator of origin for any of the goods or services applied for.
58 The Board of Appeal was therefore entitled to consider that the sign applied for, as a whole, was devoid of distinctive character for the purposes of Article 7(1)(b) of Regulation No 207/2009, since it will not enable the consumer to recognise the sign as distinctive when he comes to make a choice on the occasion of a subsequent acquisition of the goods or services in question.
The complaint alleging failure to assess each of the goods and services covered by the mark applied for
59 By its second complaint, the applicant asserts that the Board of Appeal erred in not making a distinction between the different goods and services when assessing the distinctive character of the sign applied for.
60 However, as set out above, it is clear from the reasoning and grounds relied on by the Board of Appeal that the sign is devoid of distinctive character in respect of all the goods and services covered by the trade mark application. In that regard, it must be noted that while the examination of the absolute grounds for refusal must be carried out in relation to each of the goods or services for which trade mark registration is sought, the competent authority may group those goods or services in broader categories and apply only general reasoning where they are interlinked in a sufficiently direct and specific way to the point where they form a category or group of goods or services sufficiently homogeneous to permit such general reasoning (order of 18 March 2010 in CFCMCEE v OHIM, C‑282/09 P, ECR, EU:C:2010:153, paragraphs 37 and 38, and judgment of 12 April 2011 in Euro-Information v OHIM (EURO AUTOMATIC PAYMENT), T‑28/10, ECR, EU:T:2011:158, paragraphs 54 to 56).
61 In the present case, in paragraphs 17 and 18 of the contested decision, the Board of Appeal took account of the goods and services covered by the mark applied for, specified the different groups in which they could be classified and actually assessed distinctive character in relation to as many of them as possible. In paragraph 35 of the contested decision, the Board of Appeal also stated that ‘the sign applied for, as a whole, [could not] function as an indicator of origin for any of the goods or services applied for’.
62 In addition, it should be noted that it is the applicant that claims that the sign applied for presents a combination of colours and patterns which is unusual and even striking.
63 Moreover, where an applicant claims that a sign is distinctive, notwithstanding OHIM’s analysis, it is for that applicant to provide specific and substantiated information to show that the sign applied for has either intrinsic distinctive character or distinctive character acquired through use (judgment of 25 October 2007 in Develey v OHIM, C‑238/06 P, ECR, EU:C:2007:635, paragraph 50).
64 In the present case, the arguments put forward by the applicant to support that assertion are not conclusive. By claiming that a colour, colour combinations and patterns cannot be associated with services, the applicant is suggesting that such signs have intrinsic distinctive character in relation to the services at issue. Yet, that conclusion is not correct, given that services do not have colours because colour is a physical characteristic associated with tangible objects, whereas services are intangible. However, what is important in assessing the ability of a sign to distinguish the services of one undertaking from those of other undertakings is not the fact that a colour may or may not be associated with the service itself, but the fact that a colour, colour combinations and abstract patterns may be perceived as an indication of origin.
65 In any event, it should be noted, as the Board of Appeal observed in the contested decision, that the applicant refers only to goods and services related to ‘the telecommunications sector’ — which could, at most, concern some of the goods and services applied for in Classes 9 and 38, and does not demonstrate the inherent distinctiveness of the colour pattern claimed — but fails to present any argument whatsoever with respect to the remainder of the goods and services concerned, in particular, those in Classes 7, 16, 25, 35 to 37, 39, 41, 42 and 45
66 Therefore, the Board of Appeal’s finding that the sign at issue, taken as a whole, will not enable the relevant public to recognise the sign as distinctive when making a selection on the occasion of a subsequent acquisition of the goods and/or services concerned, must be upheld.
The complaint based on the perception of the relevant public
67 By its third complaint, the applicant states that in its appeal against the examiner’s decision it provided evidence that network operators and internet service providers have adopted the use of colours as an indication of the origin of their goods and services. Accordingly, the applicant claims that consumers are able to appreciate that the sign applied for is an indication that the goods or services concerned originate from a specific network provider, and are accustomed to doing so. Thus, the applicant asserts that the sign possesses distinctive character and that, even though it may serve technical or decorative functions, it also functions as an indicator of commercial origin.
68 However, it is clear that the examples submitted are unconvincing and do not substantiate the claim that colours per se or colour combinations are important as indicators of commercial origin.
69 Those examples simply refer to undertakings which use colours as backgrounds on their internet sites, which confirms the Board of Appeal’s reasoning that colours are widely used for promotional and advertising purposes. It does not follow that the mere use of certain colours may communicate information as to the undertaking offering the goods or services.
70 In addition, the examples adduced by the applicant are significantly different to the sign at issue. In all those examples the colour is accompanied by another element (a word or a logo), whereas in the present case the sign consists of a specific shade of yellow combined with a rather vague pattern.
71 As the Board of Appeal rightly pointed out, whilst colours are capable of conveying certain associations of ideas, and of arousing feelings, they possess little inherent capacity for communicating specific information, especially since they are commonly and widely used in order to advertise and market goods or services, without any specific message (see judgment in Combination of 24 coloured squares, cited in paragraph 21 above, EU:T:2008:492, paragraph 35).
72 Given the widespread use of the two basic colours at issue in relation to goods and services in many sectors, including the sectors relevant to this case, those colours, per se, are not capable of indicating the origin of the goods and services applied for. The fact that a part of the relevant public has a high degree of attentiveness with regard to some of the goods and services does not alter that conclusion (see, to that effect, judgment of 30 April 2013 in Boehringer Ingelheim International v OHIM (RELY-ABLE), T‑640/11, EU:T:2013:225, paragraphs 21 to 24).
73 It follows from the above that the action must be dismissed in its entirety.
Costs
74 Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by OHIM.
On those grounds,
THE GENERAL COURT (Sixth Chamber)
hereby:
1. Dismisses the action;
2. Orders EE Ltd to pay the costs.
Frimodt Nielsen | Dehousse | Collins |
Delivered in open court in Luxembourg on 10 September 2015.
[Signatures]