General Court of the European Union, Decision of 28 October 2010, T-137/08 (BCS v OHIM - Deere)
This case concerned the validity of a Community trademark consisting of a combination of the colors green and yellow, registered for agricultural and forestry machines for Deere & Company (John Deere) in 2001. The trademark application, filed in 1996, described the arrangement of the colors as follows: "green for the vehicle body and yellow for the wheels".
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John Deere's trademark and description
In 2004, the Italian company BCS SpA (BCS) filed for a declaration of invalidity claiming that John Deere's trademark did not have distinctive character and that there was insufficient evidence that the mark had acquired distinctive character by use. Furthermore, it claimed infringement of its Italian non-registered trademark which also consisted of a combination of the colors green and yellow and had been used before 1996 in relation to agricultural machines in several European countries. OHIM's Cancellation Division refused the claim. OHIM's Board of Appeal confirmed the decision and dismissed the appeal.
The General Court of the European Union said that colors per se could acquire a distinctive character as a consequence of their use in the market. In the present case the use and market presence of the combination of green and yellow in John Deere's agricultural machines were sufficient to enable the relevant public to attribute the combination of the colors to John Deere and therefore to identify the commercial origin of the goods covered by the mark. John Deere could also prove that it used the same combination of colors on all its agricultural machines continuously for a considerable period before 1996.
The court emphasized that although the distinctive character of a trademark must be established throughout the European Community, it was not necessary to provide the same type of evidence in respect of each European member state, e.g. to carry out an opinion poll in every member state or to show that a trademark achieved a large market share in every member state. It was sufficient to prove that the trademark had a strong and long-lasting presence on the market even if the evidence differed in strength and type. Therefore, although John Deere's market share was low in some member states this was compensated by John Deere's presence in such markets for more than 30 years before the application of the mark.
The General Court also rejected BCS' claim of infringement of its unregistered Italian trademark. This was because BCS did not prove extensive use and presence of its trademark in the relevant national markets. It had not used the combination of colors in a consistent and uniform manner over the years.
As a result, the General Court confirmed OHIM's decision and dismissed the action of BCS as unfounded.
The graphical representation and description of the arrangement of the color in the trademark application might have contributed to John Deere's success as it was conventional for a color trademark and described the mark as a specific rather than an abstract color mark.