Deutsche Bahn appeals "red and grey" to ECJ

The Curia website brings us news of an appeal which has been lodged by Germany’s railway company Deutsche Bahn AG against the judgment of the General Court (Eighth Chamber) in Case T-404/09 Deutsche Bahn AG v Office for Harmonisation in the Internal Market (Trade Marks and Designs).

By way of background: Deutsche Bahn AG had filed a trade mark application for registration of a figurative mark that consisted of a horizontal combination of the colours grey and red and which in view of the General Court fell foul of Article 7(1)(b) of Council Regulation 207/2009. Please click here to read Laetitia Lagarde's report on the General Court's decision on the Marques Class 46 blog, where you can also see that the General Court had to decide on two figurative colour marks filed by Deutsche Bahn in two separate case, T-404/09 and T-405/09. However, Deutsche Bahn appears to have only appealed one of the two cases (T-404/09), which referred to the mark depicted on the top left: “The colour light-grey (ral 7035) is over the colour traffic-red (ral 3020), these again over the colour light-grey (ral 7035) arranged; the relationship of the colours amounts to from top to bottom light grey; Traffic-red; Lightgrey = 7: 1: 2.”

Deutsche Bahn AG’s appeal to the ECJ has been given the new case reference C-45/11 P with its pleas in law and main arguments being as follows:

"First of all, the General Court based its examination of distinctive character on a sign other than the mark applied for. The General Court did not examine the sign in its entirety, but merely based that examination on a random combination of the colours light grey and traffic-light red. The specific features of the colour system were not taken into account in the present case although the specific arrangement of those colours in the mark at issue is a part of the trade mark application and makes the sign specific.

Secondly, in the course of the assessment of distinctive character, the General Court did not consider for which specific services the trade mark application has been filed and examined its inability to be protected with regard to completely different goods. The alleged lack of distinctive character of the mark was deduced in the judgment from the circumstance that particular items or goods usually bear the colours in question (parts of railway engines and safety enclosures for electrical equipment beside railway lines; traffic signs; level crossing barriers and rail transport traffic signs; trains and the borders of railway platforms). The trade mark application in respect of the mark at issue has not however been filed in respect of those goods. The General Court did not state a reason why the circumstance that the mark at issue may possibly be incapable of being protected in respect of certain goods from the transport or rail transport sector should also provide a reason why the mark applied for in the present case in respect of services should be incapable of being protected.

Thirdly, the General Court based its assessment of the mark's distinctive character on incorrect legal bases in that it assessed the distinctive character of marks in respect of goods and marks in respect of services in the same way. The General Court failed to recognise that the public does not necessarily perceive different categories of signs in the same way. Whereas the consumer may not be accustomed to deducing the origin of the goods from their colour or packaging in the absence of graphical or word elements since goods and packaging are usually coloured, the situation is completely different as regards services. As services are by nature colourless, the consumer's perception of colours for services is totally different from his perception of colours for goods. Consequently, a difference should be made between goods and services in assessing the distinctive character of colours.

Fourthly, in assessing the distinctive character of the mark in question the General Court distorted the relevant facts and did not sufficiently state the reasons for its judgment. The General Court assumed without any grounds that horizontal bands of colour are usually used as decorative elements on trains. In doing so, it failed to recognise that the present case relates to an assessment of the distinctive character of a specific colour mark and not to stripes on railway wagons in general. Likewise, the General Court failed to recognise that the trade mark application in respect of mark at issue was not filed in respect of railway wagons, but in respect of services in Class 39. Lastly, the appellant made extensive submissions on the point that colour elements in the rail transport sector are not understood as decorative elements, but as indications of origin. The General Court did not assess those arguments put forward by the appellant."

While the General Courts decision under appeal appears to be in line with earlier case law on colour trade marks, this Kat has to admit that she immediately thought of a Deutsche Bahn ICE train (above right) when she saw Deutsche Bahn's trade mark. She must thus still be a German consumer at heart despite having lived in the UK for quite some time. Let's see what the ECJ says....