CJEU rules against wind turbine company in colour TM appeal
The Court of Justice of the European Union (CJEU) yesterday dismissed a trademark appeal made by Germany-based wind turbine company Enercon.
The case dates back to August 2001, when Enercon filed a trademark application at the European Union Intellectual Property Office (EUIPO) for a colour mark showing a grey pole with different shades of green at its base.
Enercon sought registration for the mark in class 7 for “wind energy converters, and parts therefor”.
The trademark was subsequently registered in January 2003.
However, in March 2009, Spain-based renewable company Gamesa Eólica—a subsidiary of Siemens—filed an application for a declaration of invalidity against the trademark.
In December 2010, the EUIPO’s Cancellation Division granted the declaration of invalidity.
After Enercon appealed against the decision, the EUIPO’s First Board of Appeal annulled the Cancellation Division’s ruling.
Gamesa Eólica then filed an appeal at the EU General Court.
In 2013, the General Court annulled the board’s decision. According to the court, the board “had based its decision on a mistaken perception of the nature and characteristics of the contested mark”.
The General Court said that the board had made an error of assessment in finding that the mark was not a colour mark, but rather a figurative mark made up of colours.
As a result, the case was sent to the EUIPO’s Second Board of Appeal, which said that the mark could not be qualified as a figurative mark.
Enercon appealed against the decision at the General Court. In 2017, the court found that the mark at issue was devoid of any distinctive character and claimed that Enercon’s arguments were unfounded.
The company argued before the CJEU that the classification “colour mark” is not a legal definition but is required for the “administrative convenience” of the EUIPO. Enercon added that the registration certificate of the mark at issue made it clear that it was not registered as a colour mark, but as a mark consisting of figurative elements.
Enercon criticised the General Court’s definition of the mark at issue as a “colour mark containing no figurative elements”.
The CJEU said in its decision yesterday that the General Court was entitled to take the view that the distinctive character of the mark had to be assessed according to the category of mark chosen.
In addition, Enercon argued that the General Court also made an error which led to the erroneous finding that the contested mark is a colour mark.
According to Enercon, the General Court did not consider evidence that highlighted the fact that the mark was registered as a figurative mark.
In response, the General Court said that it was not its job to re-evaluate that evidence as it was the first time the court had seen it.
In its decision, the CJEU said that it’s not the EUIPO’s or General Court’s responsibility to reclassify the category chosen for a mark.
“It cannot be held that the 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 trademarks,” said the CJEU.
Enercon’s appeal was dismissed and the company was ordered to pay the costs.
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