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

04 novembre 2009

Do you ever buy a tractor at a trade fair because of the colour you have selected?

Stefano Sandri

BCS S.p.A., an Italian company, brought an action with CFI against the decision of the Second Board of Appeal of OHIM relating to invalidity proceedings between BCS SpA and Deere & Company. The products involved were agricultural machines, in particular farm tractors, small tractors, land tractors and trailers covered by a Community colour trademark registration filed by Deere & Company, USA. The combination of green and yellow colours, was described as being ‘green for the vehicle body and yellow for the wheels’, as is shown by a picture attached to the application and reproduced on the right:

CFI, by its decision T- 137/08, 28 October 2009 , dismissed the action, being had proved by Deere & Company –according to the court - that the disputed mark had become distinctive within the terms of Article 7(3) of Regulation.

The court is very care on the analysis of the evidence submitted by the defendant in supporting the acquiring distinctiveness of the sign, notwithstanding that in the subject area the perception of the relevant public could be mainly focusing the company name and logo imprinted on the trucks.

The judgment makes a clear application of the criteria and standard on Article 7, 3 of the Regulation, since CHIEMSEE. It seems, however, it has been missed the legal key point, as to say what is the impact of the nature of the sign, a combination of colours, on the association process enabling the relevant public to identify the commercial origin of the goods bearing that combination of colours. This issue has nothing to do with a more restrict attitude in assessing the acquired distinctiveness of the sign because of its composition (see paragraph 28).

To the contrary one has to keep in mind the teaching of the Court of Justice to the extent that “while the public is accustomed to perceiving word or figurative marks instantly as signs 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 as a trade mark is sought. Consumers are not in the habit of making assumptions about the origin of goods based on their colour or the colour of their packaging, in the absence of any graphic or word element, because as a rule a colour per se (or a combination of colours) is not, in current commercial practice, used as a means of identification.”(LIBERTEL case).

In this respect, there is no in the judgement a mention whatsoever as to whether the contested decision carried out an investigation on how the relevant public might associate a colour in the subject case to the origin of the concerned products.

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