Appeal against the General Court’s decision that the Board of Appeal was fully entitled to find that the contested mark for wind energy converters was devoid of any distinctive character dismissed: General Court was fully entitled to take the view that the distinctive character of the mark had to be assessed according to the category of mark chosen in the application; a colour mark, since the appellant referred for the first time at the hearing before the General Court to content that allegedly highlighted the fact that the contested mark had been registered as a figurative mark, this evidence is inadmissible, it is for neither EUIPO nor the General Court to reclassify the category chosen for a mark.
Appeal against the General Court’s decision that the Board of Appeal was fully entitled to find that the contested mark for wind energy converters (see picture) was devoid of any distinctive character.
By its first ground of appeal, the appellant criticises, in essence, the General Court for having defined the contested mark as a colour mark containing no figurative elements. However, the contested mark was registered as a colour mark, a fact which the appellant does not dispute. As regards the appellant’s assertion that the designation of a mark as a colour mark is merely for reasons of ‘administrative convenience’, the Court notes that it has already declared that the designation of the category of mark by the applicant for registration of an EU trade mark is a legal requirement. If the General Court were required to examine the distinctiveness of a mark applied for, not only in the light of the category chosen by the applicant in its application, but also in the light of all other potentially relevant categories, that applicant’s obligation to indicate the category of mark applied for and the impossibility pursuant to Article 43(2) of Regulation No 207/2009 of subsequently amending that category would be deprived of all practical effect. Therefore, the General Court was fully entitled to take the view that the distinctive character of the mark had to be assessed according to the category of mark chosen.
By its second ground of appeal, the appellant criticises the General Court for having erred in law when it held that the content that according to him highlighted the fact that the contested mark had been registered as a figurative mark was inadmissible, inasmuch as it had been produced for the first time at the hearing. The CJEU considers that, the appellant referred for the first time at the hearing before the General Court to the fact that the registration certificate of the contested mark contains the INID (Internationally agreed Numbers for the Identification of (bibliographic) Data) code 546, which is used, as a general rule, when a mark contains figurative elements. Despite the fact that INID code 546 is referred to in that registration certificate, the appellant at no time mentioned that code during the procedure before EUIPO. On the contrary, it explicitly chose to have its mark registered as a colour mark. According to the CJEU It cannot be held that EUIPO is required to decipher of its own motion all of the documentation filed when registration of a ‘colour mark’ is applied for in order to decide on its own initiative that that mark is to be reclassified as a ‘figurative mark’ outside the legal framework laid down by the applicable rules on trade marks.