CJEU, 8 Oct 2020, C-456/19 (Aktiebolaget Östgötatrafiken), ECLI:EU:C:2020:813.
JUDGMENT OF THE COURT (Tenth Chamber)
8 October 2020 (*)
(Reference for a preliminary ruling – Trade marks – Directive 2008/95/EC – Article 3(1)(b) – Signs of which a trade mark may consist – Distinctive character – Application for registration as a trade mark of a sign in respect of a service, consisting of motifs of colour and intended to be affixed to goods used to provide that service – Assessment of the distinctive character of that sign – Criteria)
In Case C-456/19,
REQUEST for a preliminary ruling under Article 267 TFEU from the Svea hovrätt, Patent- och marknadsöverdomstolen (Svea Court of Appeal, Patents and Market Court of Appeal, Stockholm, Sweden), made by decision of 14 June 2019, received at the Court on 14 June 2019, in the proceedings
Aktiebolaget Östgötatrafiken
v
Patent- och registreringsverket,
THE COURT (Tenth Chamber),
composed of M. Ilešič, President of the Chamber, E. Juhász (Rapporteur) and I. Jarukaitis, Judges,
Advocate General: G. Pitruzzella,
Registrar: A. Calot Escobar,
having regard to the written procedure,
after considering the observations submitted on behalf of:
– Aktiebolaget Östgötatrafiken, by R. Berzelius and F. Weyde, acting as Agents,
– the European Commission, by É. Gippini Fournier, K. Simonsson and G. Tolstoy, acting as Agents,
having decided, after hearing the Advocate General, to proceed to judgment without an Opinion,
gives the following
Judgment
1 This request for a preliminary ruling concerns, in essence, the interpretation of Article 3(1)(b) of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks (OJ 2008 L 299, p. 25).
2 The application was made in the context of a dispute between Aktiebolaget Östgötatrafiken and Patent- och registreringsverket (Patent and Registration Office, Sweden; ‘the PRV’) concerning the rejection of a trade mark application.
Legal context
Directive 2008/95
3 Article 2 of Directive 2008/95, entitled ‘Signs of which a trade mark may consist’, provided:
‘A trade mark may consist of any sign capable of being represented graphically, particularly … designs, … the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.’
4 Article 3 of that directive, entitled ‘Grounds for refusal or invalidity’, stated:
‘1. The following shall not be registered or, if registered, shall be liable to be declared invalid:
…
(b) trade marks which are devoid of any distinctive character;
…
3. A trade mark shall not be refused registration or be declared invalid in accordance with paragraph 1(b), (c) or (d) if, before the date of application for registration and following the use which has been made of it, it has acquired a distinctive character. Any Member State may in addition provide that this provision shall also apply where the distinctive character was acquired after the date of application for registration or after the date of registration.
…’
5 Directive 2008/95 was repealed, with effect from 15 January 2019, by Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks (OJ 2015 L 336, p. 1).
Directive 2015/2436
6 Article 3 of Directive 2015/2436, entitled ‘Signs of which a trade mark may consist’, is worded as follows:
‘A trade mark may consist of any signs, in particular … designs, … colours, the shape of goods or of the packaging of goods …, provided that such signs are capable of:
(a) distinguishing the goods or services of one undertaking from those of other undertakings; …
…’
7 Article 4 of that directive, entitled ‘Absolute grounds for refusal or invalidity’, provides:
‘1. The following shall not be registered or, if registered, shall be liable to be declared invalid:
…
(b) trade marks which are devoid of any distinctive character;
…
4. A trade mark shall not be refused registration in accordance with paragraph 1(b), (c) or (d) if, before the date of application for registration, following the use which has been made of it, it has acquired a distinctive character. A trade mark shall not be declared invalid for the same reasons if, before the date of application for a declaration of invalidity, following the use which has been made of it, it has acquired a distinctive character.
5. Any Member State may provide that paragraph 4 is also to apply where the distinctive character was acquired after the date of application for registration but before the date of registration.’
8 In accordance with Article 54 of that directive, entitled ‘Transposition’, the Member States were required to transpose, in particular, Articles 3 to 6 thereof by 14 January 2019 at the latest.
The dispute in the main proceedings and the questions referred for a preliminary ruling
9 The appellant in the main proceedings is the proprietor of figurative marks registered at the PRV under Nos 363521 to 363523 for services provided by means of vehicles and transport services falling within Class 39 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended.
10 Those figurative marks are represented as follows:
– No 363521
– No 363522
– No 363523
11 On 23 November 2016, the appellant in the main proceedings filed three trade mark applications with the PRV for various services provided by means of vehicles and transport services falling within Class 39 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks.
12 Those three applications were accompanied by the following description: ‘Colouring of vehicles in the colours red, white and orange, as shown’. The appellant in the main proceedings also specified that those applications did not concern the actual shape of the vehicles or the fields of the colour black or grey covering that shape.
13 By a decision of 29 August 2017, the PRV rejected those applications on the ground that the signs for which registration was sought under trade mark law were merely decorative, that they could not be perceived as signs capable of distinguishing the services covered by those applications and that they were therefore devoid of distinctive character.
14 The appellant in the main proceedings challenged that decision before the Patent- och marknadsdomstolen (Patents and Market Court, Sweden).
15 In support of its action, it stated that the marks applied for constituted ‘position marks’, consisting of ellipses of different sizes and in the colours red, orange and white, with a specific size and placed in a specific position on buses and trains used for the provision of transport services.
16 It provided the following images of the marks applied for, showing the outlines of the vehicles in dotted lines in order to make it clear that the protection applied for does not concern the shape of those vehicles:
Side view
Front view
Rear view
Side view