Trademarks, Brands, Patents, Designs, Made in Italy, Copyrights, Competition Law, Contracts and Enforcement

02 dicembre 2008


Stefano Sandri

Latins would say "repetita juvant" when by repeating a sentence it is likelihood to be converted in the truth. This is not unfortunately the case of the judgement lately rendered by CFI , T‑400/07, 12 November 2008, where the combination of the colours filed with OHIM by GretagMacbeth LLC, USA, was denied of registration as Community trademark.

The court, indeed, spent a number of paragraphs in its grounds to quote very well known principles governing the legal appreciation of colours per se and their combination, from Libertel, to Heilderberg. Their application to the subject case, however, is not exempted by some criticism. We all agree that the colour, to mature into a registered mark, must satisfy three conditions. First, it must be a sign. Secondly, that sign must be capable of graphic representation. Thirdly, the sign must be capable of distinguishing the goods or services of one undertaking from those of other undertakings. Clearly, there is no question on 1 and 2. The decision therefore focused the item 3, e.i. the distinctive character of the concerned sign. In this respect it seems apparent that the sign applied for is a combination of colours, with its own identity, and thus reference must be done to the perception of it as such by the relevant people. It’s hard to understand why the court, instead of investigating the perception aspect of the sign, analyzes the single (!) distinctiveness of each of the 24 colours. Who cares about it?.

The decision aknowledges that the global impression must be here considered . Nevetheless paragraph 46 recites : ”Il (the sign) ne se distingue ainsi pas d’autres combinaisons de couleurs similaires, qui, de par leur nature, donneront, la même impression d’ensemble que le signe demandé.” ( only French version is at the moment available, but I’d translate as “ the sign is not distinguishable from other colours combinations, which, on the other hand, would raise the same global impression”). Neither the Board of Appeal nor the CFI show the reason, evidence or arguments on the basis of which the quoted sentence has been given. Reading through the entire decision, however, it is manifest that the court considers the sign in question as inherently lacking of any distinctive power (why?) and that no secondary meaning has been claimed and evidenced.
Or should we said, again, that this carré is nothing else that
“le simple résultat de la réunion des éléments constituant le signe et qu’elle pourrait être produite par toute combinaison similaire, de sorte qu’elle ne constitue pas un élément distinctif.” ? (EN. “just the addition of the elements composing the sign which could be made by similar composition ?).
I fear that Piet Mondrian will not agree.

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