In Andreas Stihl AG & Co KG R 355/2007-4, the Board of Appeal at The Office of Harmonization for the Internal Market (OHIM) confirmed the examiner’s decision that the colour mark was not inherently distinctive but held that the mark had acquired distinctive character under Article 7(3) of the Community Trade Mark Regulation, taking into account the Applicant’s evidence, including two market surveys. The evidence showed that the Applicant was the market leader for the goods in question and, further, that it was recognised by the relevant public by reference solely to the colour combination.
The mark applied for consisted of the colour combination orange—applied to the top of the housing of power-operated cut-off machines (chainsaws)—and the colour grey, applied to the bottom of the housing.
The application was for “power tools, namely power-operated cut-off machines” in Class 7.
In 2007, OHIM refused protection of the mark in the European Community for all the goods in question on the grounds that the mark was devoid of any distinctive character within the meaning of Article 7(1)(b) of the Community Trade Mark Regulation. The trade mark owner, Andreas Stihl AG, appealed the decision and submitted various arguments supported by evidence. These included
- The mark did not claim the colours orange and grey per se, but for the colours as applied to the housing of the goods in question. This, they said, was clear from the description of the claimed colours.
- Even a colour per se can be inherently distinctive where the category of goods or services is restricted and the market is very specific and not the general public.
- The colours orange and grey are not common warning colours.
- The mark has acquired distinctiveness through extensive use since 1972 throughout all Member States of the European Union. Evidence of turnover, advertising spend and distribution throughout the Community was submitted.
- Statements from the Austrian Forestry Association, the German Federal Association of power operated tools and various companies in Spain, stating that the colour combination is associated with Andreas Stihl.
- Two market surveys in Germany and France showing that the relevant consumers associated the orange and grey colour combination with Andreas Stihl.
If the mark was granted protection, it would, under Article 7(1) of the Community Trade Mark Regulation, confer on the owner rights over those colours per se, irrespective of to which parts of the goods the colours were applied.
Distinctive character must be assessed by reference to the goods or services in question and by reference to the perception of the relevant public. The Board accepted that the goods for which protection was sought were specific and specialised. As for the relevant public, it accepted that, here, it consisted of a professional public such as skilled forestry workers and professional gardeners.
Perception by this category of consumers is, however, not the same for colour marks as it is for word or device marks. With colour marks, the public will not instantly perceive the colours as an indicator of their commercial origin. Although colours are capable of conveying ideas, they do not necessarily communicate specific information. Further, there is a public interest in keeping colours available for other competitors.
The orange part of the housing could serve to draw users’ attention to the dangerous parts of the machine and would not, therefore, be perceived as an indicator of origin. Further, orange is used as a warning or safety colour, for example, on traffic cones.
The shade of the orange used was also irrelevant. Even if the shades were different, such difference was not perceptible to the relevant public. Consumers, even specialists, do not retain a perfect image of a mark in their mind and would not, therefore, differentiate between various nuances or shades of orange. Further, grey is commonly associated with metallic or plastic materials similar to those of which the goods in question are comprised.
The combination of orange and grey could not, therefore, perform the function of a trade mark in itself. Such distinctiveness would have to have been acquired and the relevant public would have to have become accustomed to the colours as a result of intense use.
The Board noted that Article 7(3) of the Community Trade Mark Regulation on acquired distinctiveness requires that the result of intensive use must render the mark capable of functioning as an indicator of origin.
The advertising evidence, sales figures, market share evidence and statements from various companies and associations in Austria, Germany and Spain demonstrated clearly that Andreas Stihl was the market leader in the specific market of power driven cut-off saws and that the colours were used consistently on the goods in question throughout the territory. However, mere use did not mean that the relevant public perceived the mark as an indicator of commercial origin.
The surveys submitted did, however, show that a significant number of the relevant public did, in fact, see the colour combination orange and grey as identifying the trade mark owner’s company. The Board was impressed by the figures from the surveys. In the German survey, 72 per cent of interviewees stated that the orange and grey colour combination indicated a specific company when they were shown a card of the colour combination and asked the question, [do you]…think, in conjunction with petrol engine driven cutoff saws, that the colour combination is from a specific company, various companies or no company at all?
68.4 per cent of the interviewees then went on to correctly name the company as Andreas Stihl.
These figures were confirmed by the French survey and, due to the intense use already proved across the whole of the European Union, the figures from the surveys could be extrapolated to the other Member States.
The Board decided that the surveys had all been done in line with scientific principles of demoscopy.
Andreas Stihl was, therefore, a market leader in the specialised field concerned and was instantly recognised by the relevant public by reference to the orange and grey colour combination. The mark had, therefore, acquired distinctiveness within the meaning of Article 7(3) of the Community Trade Mark Regulation.