Kapman AB v OHIM (CFI (First Chamber); T-127/06; 05.12.07)

The Swedish company Kapman AB (“Kapman”) sought to register the figurative mark (reproduced below) in the colour blue corresponding to Pantone reference PMS 302U in class 8 for saw blades (for hand-operated tools).

The registration was rejected under Article 7(1)(b) on the basis that the mark was a reproduction of a saw blade in the colour blue which, when applied to goods in class 8, did not represent an indication of commercial origin. Furthermore, the use of the colour blue did not constitute a fanciful or imaginary element.

The BoA upheld the decision and Kapman appealed to the CFI.

Kapman firstly submitted that the geometric shape with the use of the colour blue made the mark inherently distinctive. The CFI rejected this; the shape of the mark copies the shape of the goods to which it applies and coloured saw blades are commonplace. Therefore use of the colour blue does not confer distinctiveness onto the mark.

Kapman further submitted that OHIM had infringed the rules on the burden of proof in that it is for OHIM to provide reasons for rejecting trade marks and not for the applicant to prove that the mark is distinctive. The CFI in dismissing this plea, held that the onus is on the applicant who is relying on the distinctive character of the mark to provide information and substantiate claims of distinctiveness, whether inherent or acquired through use.

Finally, Kapman submitted that it was entitled to believe that the mark would be registered due to OHIM’s previous practice of registering marks with a minimum degree of distinctiveness citing DaimlerChrysler v OHIM (T-128/01 [2003]). The CFI confirmed that the criteria in DaimlerChrysler that led the court to accept that the mark had a minimum degree of distinctiveness did not apply in the present case where the mark was a reproduction of a saw blade in the colour blue.

The CFI ordered that the action be dismissed as manifestly lacking any foundation in law and ordered Kapman to pay the costs.