C-104/01

5. Article 6 quinquies A provides that every trade mark duly registered in the country of origin shall be accepted for filing and protected as it is in the other countries acceding to the Convention, subject to the reservations indicated in that Article. 2. The relevant legal background comprises Article 6 quinqiues B(2) states that trade the Paris Convention for the Protection of marks shall be denied registration which Industrial Property, 3 Community legis- are devoid of any distinctive character, or lation and the Uniform Benelux Law on consist exclusively of signs or indications Trade Marks. which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, place of origin of the goods, or the 1 — Original language: French. 2 — Directive of 21 December 1988 to approximate the laws of time of production, or have become cus- the Member States relating to trade marks (OJ 1989, L 40, tomary in the current language or in bona p. 1, hereinafter 'the Directive'). 3 — Convention of 20 March 1883 (hereinafter 'the Paris fide and established trade practices of the Convention'). country where protection is claimed.

I - 3798

LIBERTEL

6. According to Article 6 quinquies C, in 9. The Directive therefore prescribes the determining whether a mark is eligible for conditions which apply to the registration protection, all the factual circumstances of a sign as a trade m a r k . 7 Article 2 is must be taken into consideration, particu- headed 'Signs of which a trade mark may larly the length of time the mark has been consist', and provides that: in use.

OPINION OF MR LÉGER — CASE C-104/01

(c) trade marks which consist exclusively 3. A trade mark shall not be refused regis- of signs or indications which may tration or be declared invalid in accordance serve, in trade, to designate the kind, with paragraph 1(b), (c) or (d) if, before the quality, quantity, intended purpose, date of application for registration and value, geographical origin, or the time following the use which has been made of of production of the goods or of the it, it has acquired a distinctive character. rendering of the service, or other char- Any Member State may in addition provide acteristics of the goods; 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.'

(d) trade marks which consist exclusively of signs or indications which have become customary in the current lan- guage or in the bona fide and estab- lished practices of the trade; 11. According to Article 4 of the Directive, a trade mark may also be refused regis- tration, or declared invalid if registered, if it is identical with an earlier trade mark or if there exists a likelihood of confusion with (e) signs which consist exclusively of: the earlier trade mark, in relation to goods or services identical with or similar to the goods or services for which the earlier trade mark is protected.

— the shape which results from the nature of the goods themselves, or

12. In order to guarantee the trade mark as an indication of origin, the Directive also — the shape of goods which is necess- specifies the protection to be enjoyed by ary to obtain a technical result, or registered trade marks within the Member States. 8 Article 5 states:

(b) any sign where, because of its identity 'Paragraphs 1 to 4 shall not affect provi- with, or similarity to, the trade mark sions in any Member State relating to the and the identity or similarity of the protection against the use of a sign other goods and services covered by the trade than for the purposes of distinguishing mark and the sign, there exists a goods or services, where use of that sign likelihood of confusion on the part of without due cause takes unfair advantage the public, which includes the likeli- of, or is detrimental to, the distinctive hood of association between the sign character or the repute of the trade mark.' and the trade mark.

18. Article 1 of the BLM states that:

16. The provisions of the Regulation relat- ing to the acquisition of rights in trade 'The following shall be considered individ- marks and their effects are expressed in the ual marks: designations, designs, prints, same terms as in the Directive. Thus, seals, letters, numbers, shapes of goods or Article 4 reproduces the provisions of their get-up, and any other symbols which Article 2 of the Directive relating to the serve to distinguish the goods or services of an enterprise. signs of which a Community trade mark may consist, Article 7 reproduces those of Article 3 of the Directive relative to the grounds on which registration may be refused, and Article 9 reproduces those of Article 5 of the Directive on the rights conferred by a trade mark. Similarly, a Community trade mark is only protected to However, shapes determined by the very the extent that it is used. Article 15 of the nature of the goods or which affect their Regulation reproduces the provisions of actual value or produce industrial results Article 10 of the Directive relating to the cannot be considered marks.' use of trade marks. 12 — Signed at Brussels on 19 March 1962, Moniteur Belge of 14 October 1969 (hereinafter 'BLM'). 11 — First recital. 13 — Moniteur Belge of 12 March 1996.

I - 3802

LIBERTEL

19. Article 6 bis of the BLM provides that: 5. Refusal to register a mark in respect of all or some of the products render the application wholly or partially invalid. Such invalidity shall not take effect until the time-limit for appeals referred to in ' 1 . The Benelux Trade Mark Office shall Article 6 1er has expired, without having refuse to register an application when it been used, or until the request to order considers that: registration has been irrevocably rejected.'

22. In the schedule to the application, the 25. Libertei lodged observations intended space designated for the representation of to show that a distinctive character had in the sign was coloured orange. The section fact been acquired. intended inter alia for recording the colour of the trade mark was completed with the word Orange'. 16

26. By letter of 10 September 1997, the BTO intimated its decision definitively to refuse to register the application on the grounds that it lacked any distinctive char­ acter.

23. The goods and services to which the application for registration of that colour related were those in classes 9 and 35 to 38 laid down by the Nice Agreement concern­ 27. Liberteľs appeal against that decision ing the International Classification of to the Gerechtshof (Regional Court of Goods and Services for the purposes of Appeal) of The Hague was rejected for the Registration of Marks of 15 June 1957, the same reason. as revised and amended. In the application, Libertei stated that the goods covered by- class 9 comprised telecommunications apparatus. In respect of classes 35 to 38, the application referred to telecommuni­ 28. Libertei appealed against the decision cations services and to the physical, finan­ of the Gerechtshof of The Hague to the cial and technical management of telecom­ Hoge Raad der Nederlanden. munications systems. 17

I I I— Questions referred for a preliminary ruling

24. By letter of 21 February 1997, the BTO informed Liberteľs trade mark consultant of its provisional refusal to register the 29. By order of 23 February 2001, the application on the ground that Libertei had Hoge Raad der Nederlanden decided to failed to show that the colour orange had stay the proceedings and refer the following acquired a distinctive character through questions to the Court of Justice for a use. 18 preliminary ruling:

(b) does it make any difference if 30. It should be observed that according to registration is sought for a large the settled case-law of the Court it is solely number of goods and/or services, for the national court before which a rather than for a specific product dispute has been brought, and which must or service, or category of goods or assume responsibility for the subsequent services respectively? judicial decision, to determine in the light of the particular circumstances of the case both the need for a preliminary ruling in order to enable it to deliver judgment and the relevance of the questions which it submits to the Court. 19 Nevertheless, the Court takes the view that it is its duty to interpret all provisions of Community law (3) In the assessment of the distinctive which national courts need in order to character of a specific colour as a trade decide the actions pending before them, m a r k , must account be taken of even if those provisions are not expressly whether, with regard to that colour, there is a general interest in availabil- ity, such as can exist in respect of signs 19 — S e e for example Case c-415/93 Bosman [1995] which denote a geographical origin? ECR I-4921, paragraph 5 9 .

I - 3805

OPINION OF MR LÉGER — CASE C-104/01

indicated in the questions referred to it by tered as a trade mark. Article 3(l)(a) of the those courts. 20 Directive confirms that signs which do not meet those requirements are, by definition, incapable of constituting a trade mark.

I - 3806

LIBERTEL

ing, have a distinctive character. The Com- within the meaning of the wording 'any mission points out that colours may repre- signs', which should be given the broadest sent an important part of communications interpretation. It states that to restrict the between an undertaking and its customers protection of colour marks to a specific or consumers; they attract attention, they presentation would be contrary to the spirit may have an inherent meaning and provoke of Community trade mark law and that a certain associations in the beholder. 29 contour or delimitation is not required for the purposes of a graphical representation within the meaning of Article 4 of the Regulation. 31

38. In support of their analysis, the Com- mission, Libertei and the BTO refer to the joint declaration of the Council of the European Union and the Commission appearing in the minute of the meeting of the Council at which the Directive was C — Analysis adopted. This declaration stated that: 'the Council and the Commission consider that Article 2 [of the Directive] does not exclude the possibility: of registering as a trade mark a combination of colours or one colour alone... provided that such signs are 40. Unlike the interveners, I am of the view capable of distinguishing the goods or that Article 2 of the Directive docs not services of one undertaking from those of permit a colour without any shape or other undertakings'. 30 contour to be registered as a trade mark.

42. Nevertheless, before considering each bination of light by a prism, set the number of these requirements, it may be useful to of principal colours of the spectrum at give a brief description of certain essential seven. 34 Painters distinguish primary col- features of the concept of 'colour'. ours, namely yellow, red and blue, from which it is possible to produce other colours, which are termed 'composite'. For industrial colour applications, profes- sionals have mapped out different groups of specimens, strictly differentiated using a system of rules which allow a very large 1. The concept of 'colour' number of tonalities to be defined. 35 Nevertheless, the human eye can only distinguish a limited number of shades with certainty. 36 Moreover, the number of particular words used to name colours is even more restricted. 37 The number of colours capable of being identified and 43. 'Colour is a concept which is intuitively described with precision by an observer understood by everybody, but which is very thus remains extremely limited. difficult to define in a universal manner.' 32 It is nevertheless accepted that colour is a sensation. It involves perception by the eye and transmission to the brain of the effects of luminous radiation on matter. Colour is thus not a pre-existing objective reality of which we require only to become con- scious, such as a film placed over an object. It depends both on the nature and intensity of light, and on the eye of the observer. The 45. Lastly, colour is a language. As it colour of an object therefore changes in involves a sensation which reflects the relation to lighting conditions and the appearance of things, it may provoke feel- distance from which the object is observed. ings in the observer. It may also transmit Its perception also varies depending on the items of information. These feelings and individual seeing it. 33 these items of information are purely cultural phenomena. They are based on

luminous radiation and matter, it is always the attribute of something else. So visual memory, which experience tells us is powerful and lasting, 39 is made up of mental representations of the objects which surround us. 48. I am of the view that the arguments of the interveners, based on the wording of Article 2 of the Directive and the intention of the legislature, in support of allowing a colour per se to be registered as a trade mark are not persuasive. 46. It is in the light of these observations that the two requirements laid down under Article 2 of the Directive fall to be con­ sidered.

49. If one begins by considering the word­ ing of Article 2 of the Directive, which is consistent on the point in most of the languages in which it is published, I am of 2. A sign capable of being represented the opinion that no conclusion can be graphically drawn from the expression 'any sign' or from the indicative character of the list of signs set out in this article as being capable of being graphically represented.

47. It should be observed that the Court has consistently held that, in interpreting a

excluded by Portuguese legislation. 41 It is 51. Secondly, the joint declaration of the allowed under French and Italian law only Council and the Commission referred to for shades of colours 42 and chromatic above appears to me to have no legal force tonalities 43 respectively. It is permitted for two reasons. under German law. 44 Lastly, Benelux, Danish, Greek, Irish, Austrian, Finnish, Swedish and United Kingdom law make no express reference to the point.

This approach was confirmed by the Court in the VAG Sverige case. 47 41 —According to Article 166(1)(d) of the Codigo da Propri edade Industrial (Industrial Property Code) approved by Decree-Law No 26/95 of 24 January 1995, colours may not be registered as trade marks 'unless several colours are combined with one another or with other items in a particular and distinctive manner'. 42 — Article L 711-1 of the French intellectual property code, as amended by a law of 4 January 1991, states that figurative signs such as 'compositions, combinations or shades of colours' may constitute a trade mark. 43 — Article 16 of the Italian law on trade marks, as amended by a legislative decree of 4 December 1992 provides that: 53. Secondly, it should be noted that the '[a]lľnew signs capable of being represented graphically, in Council and the Commission indicated in

. . including colours and expressly to limit the legal effects of their combinations of colours that are capable of distinguishing the goods or services of one undertaking from those of declaration. It would therefore be wrong to other undertakings qualify for protection as trade marks'. Nevertheless, the question of whether an abstract colour draw conclusions from the intention of the may constitute a trade mark remains under consideration by the Bundespatentgericht, Germany (Federal Patent legislature in order to interpret Article 2 of Court), which has referred a preliminary question to the the Directive. Court in the case of Heidelberger Bauchemie (Case

I-3810

LIBERTEL

54. In this context, it is worth noting that tion of a trade mark immediately it is Article 15 of the Agreement on Trade- registered, and before its use. Registration related Aspects of Intellectual Property is therefore subject to a certain number of Rights 49 to which both the Member States conditions which require to be verified by and, to the extent that it falls within its the competent authority. competence, the Community have acceded refers only to combinations of colours. 50 This limitation allows one to assume that in the negotiations leading to the W T O agree- ments a colour per se had been considered ineligible for registration as a trade mark. This analysis is strengthened by the fact 57. Thus the sign in question must be that the original text of the article, dating capable generally of constituting a trade from 1990, referred to colours. 51 mark in terms of Articles 2 and 3(1 )(a) of the Directive. It must also not be subject to any of the other grounds for refusal set out in Article 3(1), nor must it conflict with earlier rights of the kind referred to in Article 4 of the Directive.

55. Consideration of the scheme of the Directive and the purpose underlying the requirement in question also suggests that a colour per se should not be a sign capable of constituting a trade mark. 58. As these conditions fall by definition to be examined independently of any con- sideration of the possible use of the mark, such examination can only take place on the basis of the sign as it is described in the application for registration.

I - 3811

OPINION OF MR LÉGER — CASE C-104/01

60. It therefore follows from the scheme of inspection of the register should allow a the Directive that it is the graphic repre- person to know, with as much certainty as sentation of the sign set out in the appli- the registration system will allow, the cation for registration that allows an assess- nature and scope of the signs, indications ment to be carried out as to whether all the and symbols appearing on the register and conditions relating to the acquisition of it is for this reason that they require to be rights to the trade mark are complied with represented graphically. If an undertaking and which determines the rights and obli- acquires a monopoly in certain signs and gations conferred by its registration. indications in order to distinguish its goods and services from those of other undertak- ings, it is necessary to be able to establish clearly what the symbols are which con- stitute it so that the others are aware of what it is they must refrain from doing'. 53 The counterpart of the monopoly conferred 61. The scheme of the Directive thus indi- by registration of the trade mark is that cates that the first condition under Article 2 third parties must be clearly informed as to is designed to allow precise identification of the sign which is protected. the sign that will be used by the applicant in order to distinguish his goods and services.

64. It follows that not every form of graphic representation will suffice. Two conditions must be met. First, the repre- 62. This interpretation is supported by the sentation must be clear and precise in order purpose underlying the requirement in that one may know beyond any possible q u e s t i o n . As A d v o c a t e G e n e r a l doubt what it is that is being given the Ruiz-Jarabo Colomer explained in his benefit of exclusive rights. Secondly, it Opinion in the Sieckmann case (Case must be intelligible to persons wishing to C-273/00) pending before the Court, 52 inspect the register, namely other manu- the requirement that the sign be capable facturers and consumers. It should not be of being represented graphically is based on necessary to go to inordinate lengths to the principle of legal certainty. ascertain what sign the applicant will actually use. 54

is designated by an internationally applied their external surface or their packaging, or body of rules. In the latter case, it does not appear on only some of these, or (in the seem to me that the effort demanded of a case of very distinct designs) be surrounded consumer or a competitor in inspecting the by the generic colour of the goods. relevant group of specimens in order to see what shade the applicant claims is excess- ive. Unless such a collection of specimens were difficult of access, a designation of this kind would allow a person to know clearly and unambiguously what colour the applicant had selected. 69. The same applies to services. By defi- nition, services have no material form in themselves, and thus have no colour. The trade mark could therefore only be applied to documents, vehicles or other objects used in connection with their supply. Once again, the colour applied for could appear on the whole of the surface of the item 66. I am, however, of the view that the concerned, or (in the case of very distinct reproduction or designation of a colour in designs) on part only of it. itself does not provide any means of deter- mining what sign the applicant proposes to use in order to distinguish his goods and services.

70. Moreover, if the applicant were to apply for registration of a colour per se, thereby seeking to obtain a monopoly in its use, this would suggest that he was trying 67. As was mentioned at point 45 of this to reserve all these possibilities. Opinion, a colour is always the attribute of something else. Unlike the signs listed in Article 2 of the Directive, such as words, designs, letters, numerals, the shape of goods or their packaging, a colour alone has no independent existence. 71. This is shown all the more clearly if, as in the Heidelberger Baitcbemic case cited above, the applicant were to apply for registration of several colours per se. 55 The absence of any arrangement of these col-

72. It would thus be very difficult in prac- tice for a competent authority, faced with 75. If the registered trade mark is the an application relating to a colour without colour per se, other traders would have shape or contour to ascertain whether the difficulty in establishing in what way it other conditions required for the regis- would still be possible for them to use that tration of a trade mark had been met. colour for goods or services identical with Depending on whether it covered the whole or merely similar to those for which regis- surface of the goods or was a very distinct tration of the colour had been permitted. design, the colour might appear to a con- sumer to be wholly ornamental or a part of a distinctive sign. One might also ask in what conditions the competent authority could properly establish the likelihood of confusion between the sign applied for and a previously registered trade mark which included the colour applied for or a shade 76. Besides, this uncertainty would affect of it. not only the colour as reproduced in the register or designated in an internationally agreed set of rules, but a large number of shades close to it. As was pointed out in points 43 and 44 of this Opinion, people's ability to distinguish shades of colours without risk of confusion is limited both 73. I would go on to submit that the by the properties of the human eye and the registration of a colour per se as a trade variable nature of the colour of objects mark would not allow other traders inspec- having regard to lighting conditions and the ting the register to determine what their distance from which they are observed. rights were.

58 — The Court of First Instance stated this rule in ils first judgment given in the field of Community trade mark law 80. I am of the view that Article 2 of the (Case T-163/98 Pruder &: Gambie v O í f/M fììuby Dry) 11999| ECU II-2.183, paragraph 21), and has regularly Directive excludes categories of signs or restateti it in later itidgments (see, for example, Case indications which are intrinsically inca- T-87/00 Bank fur Arimi timi Wirtschaft v Ol UM (Easy- bank) [20011 ECR II-1259, paragraph 21). pable of having a distinctive character. 59 — Case C-299/99 Philips Electronics | 2 0 0 2 | ECR 1-5475, paragraph 59. 60 — I am of the opinion that the Regulation and the Directive, which arc worded m identical terms, should he interpreted 56 — Case C-39/97 [1998] LCR 1-5507, paragraph 27. in the same way. 57 — At paragraph 21 of that judgment, the Court held that in 6 1 — Case C-517/99 Merz & Krell [2001] ECR I-6959, any event, for reasons of legal certainty and proper paragraph 30. administration, it is necessary to ensure that trade marks 62 — Article 7( I )(a) of the Regulation is even more explicit as it whose use could he challenged hefore the courts are not states that signs that do not conform to the requirements of registered. Article 4 of the Regulation cannot he registered.

I - 3815

OPINION OF MR LÉGER — CASE C-104/01

that the requirement that trade marks 85. First, and as has just been pointed out, which are devoid of any distinctive char- an application for registration of a colour acter should not be registered is expressly per se would not allow determination of repeated in Article 3(1)(b) of the Directive. the sign actually appearing on the goods or in association with the services in question. An assessment of whether or not a sign is capable of having a distinctive character requires in my view that one should be able to know exactly what the sign is.

87. As was pointed out in point 45 of this 84. The question at this stage is therefore Opinion, if a colour per se, that is to say as one of determining whether a colour per se an abstract entity, is to have meaning and can have a distinctive character having provoke feelings, this is only because of the regard only to its intrinsic characteristics. conventions in force in a society at a given In my view there are two reasons why it time. 68 Moreover, even this meaning or cannot. these feelings, which may be based on deeply-rooted cultural phenomena, are 63 — There are several cases pending before the Court on this topic. As well as the Dieckmann and Heidelberger Hauche- mìe cases referred to above, an action is also pending in 66 — See, for example, Case C-10/89 HAG GF [1990] which it is asked to rule on whether a trade mark may be ECR 1-3711, paragraph 14; Canon, cited above, constituted by noises or sounds (Case C-283/01 Shield paragraph 28, and Merz & Krell, cited above, Mark ECR 1-1413). paragrapn 22. 64 — See the judgments of the Court in Cano», paragraph 27, 67 — Case C-143/00 Boehringer Ingelheim and Others [2002] and Merz & Krell, paragraphs 23 and 24, both cited ECR I-3759, paragraph 29. above. 68 — Thus black signifies mourning, white purity (Pastoureau, 65 — Paragraph 37, emphasis added. M, cited above, pp. 31 and 157).

I-3816

LIBERTEL

69 — Wearing a black veil suggests mourning; however, wearing a black dress at an evening reception does not necessarily mean the same. 70 — Klinkenberg, J.-M., 'Qu'est-ce que le signe?', Le Langage, 92. Accordingly, to reduce signs to an Editions Sciences Humaines, p. 105. The author gives the following example, taken from the highway code: when abstract colour and to register that as a combined with a round shape, the colour red signifies a prohibition; when combined with a triangular snape, it signifies a danger. 71 — Registration of 27 October 1999, No 31336. 75 — See in this regard point 70 of my Opinion in Case 72 — Registration of 3 August 2000, No 212787. C-112/99 Toshiba Europe [2001] ECR I-7945. 73 — Registration of 9 January 2001, No 396176. 76 — If a car driver is able to associate green with BP rilling 74 — As OHIM statistics do not include details relating to stations, this is because in that company's logo the letters colours per se, it is difficult to confirm that no trade mark 'BP' appear against a green background and some parts of of this kind had been registered previously. Nevertheless, it the exterior of the service station buildings of that is possible to conclude from the decisions of OHIM that if company adopt the same colour. Likewise, the letters such registrations have been permitted it has only been in 'Milka' appear on the wrapping of chocolate bars in very exceptional cases (see for example Case R relation to which the colour lilac/violet has been registered 122/1998-3, cited above, paragraphs 17, 18 and 21). as a trade mark by OHIM.

93. This approach has been followed by certain national trade mark offices. The competent authority in the United King- dom did not register the colour green per se on an application by the petroleum com- pany BP for goods and services sold in its petrol filling stations, but did so for that colour when applied to the exterior of premises or buildings conforming to sched- ules annexed to the application forms. 77 In the same way, the authority did not register the colour pink per se for insulation 95. In the light of the above, it is my materials, but 'the colour pink, as defined opinion that these examples of the regis- by Pantone No 196C, applied to the entire tration of a colour per se as a trade mark do surface of the goods'. 7 8In the field of service marks, the competent authority in Ireland allowed United Parcel Service of 80 — According to the Trademark Manual of Examining Pro- America to register a trade mark defined as: cedures, June 2002 version, the registration of a trade mark is conditional on its previous use. Section 1202.05, 'The mark consists of the colour brown as headed 'Color as a mark' states: 'Color marks are marks shown on the form of application, being that consist solely of one or more colors used on particular objects. For marks used in connection with goods, the the predominant colour applied to the color may be used on the entire surface of the goods, on a portion of the goods, or on all of the packaging for the visible surface of the uniforms worn by goods... Similarly, service marks may consist of color used staff in the performance of the services.' 79 on all or part of materials used in the advertising and rendering of the services... Color marks are never inherently distinctive, and cannot be registered on the Principal Register without a showing of acquired distinc- tiveness...' (http://www.uspto.gov). 77 — High Court of Justice in Northern Ireland, Chancery 81 — Registration No 1633711. The representation of the mark Division, 16 June 2000, BP Amoco PLC v John Kelly Ltd on the register shows a drawing of the product. In its and Glenshane Tourist Services Ltd. judgment in Qualitex Co. v Jacobson Products Co. 514 78 — Registration of 25 October 1996, No 2004215. The U.S. 159 (1995), the Supreme Court held that a colour cannot be registered as a trade mark unless it is established representation of the trade mark on the register shows a that it has acquired over time 'a secondary meaning', that drawing of insulating material. is to say that consumers recognise it as indicating a 79 — Registration dated 27 October 1998, No 221818. The product's origin. The Supreme Court confirmed its pos- representation of the trade mark on the register shows a ition in its judgment in Wal-Mart Stores Inc. v Samara uniform in the colour referred to in the application. Brothers, Inc. 165 F.3d120 (2000).

97. That being so, there is no reason to believe that the protection given to those 99. Registration of a colour per se would, by application of Article 5 of the Directive 82 — The same applies to the judgments of the Court of First Instance in Case T-316/00 Viking-Umwelttechnik v and, at the very least, by reason of the OHIM (juxtaposition of green and grey) [2002] ECR II-3715, and Case T-173/00 KWS Saat v OHIM impossibility faced by other traders of (shade of orange) [2002] ECR II-3843, delivered after the hearing in the present case. In these cases, the Court of establishing precisely whether and how First Instance held as a preliminary point that colours or they could continue to use that colour, colour combinations per se arc capable of constituting Community trade marks in so far as they arc capable of result in conferring a right to exclusive use distinguishing the goods or services of one undertaking from those of another (see Viktng-Umwelttechnik (jux- of it on the proprietor of the trade mark. taposition of green and grey), paragraph 2 3 , and KWS Saat Furthermore, as was pointed out at point 76 (shade of orange), paragraph 25). Moreover, m the KWS Saat (shade of orange), case, that Court held that a shade of this Opinion, that exclusive use would of the colour orange per se was capable of having a distinctive character in relation to certain services. I would extend not only to the colour as reproduced note, first, that the question of whether a colour per se, not having any shape or contour, is capable of constituting a in the application for registration or desig- Community trade mark within the meaning of Article 4 of nated by an internationally agreed set of the Regulation was not discussed before the Court of First Instance. Secondly, I do not believe that the reasoning of rules, but could extend to a large number of the Court of First Instance on which the decision to hold shades of it. In other words, it is very likely that a colour per se could have a distinctive character in relation to certain services was based requires me to reconsider my analysis. that registration of a particular shade of blue as a trade mark would lead to

86 — Paragraph 73. 101. It would thus be enough for several 87 — According to Géodys 2000/2001, 'La îiiarque dans tous ses colours per se to be registered as trade états', 'numerous industries have set up in their design departments a group specialising in colours and materials. marks to confer a real monopoly of use of It was Moulinex which started, in 1997, by producing its the colour on a few traders. Such a small domestic appliances in yellow or green. Nowadays, Apple colours its IMac, Nurofen its medicine packaging monopoly could distort competition. and Philips its television sets', p. 218. 88 — According to Kapferer, J.-N., 'colour is the first indicator of a trade mark for a consumer in a self-service store', in Les marques, Capital de l'entreprise, Les chemins de la reconquête, Les éditions de l'organisation 1995, Paris, 83 — This point of view is shared by OHIM. For the colour blue, p. 355. see nie decision of the Second Board of Appeal of 29 February 2000, Case R 342/1999-2, rejecting an 89 — Slightly acid colours signify regression and trigger mem- application for registration lodged by ARAL. See also ories of the colours of childhood in the consumer, loud decision R 122/1998-3, cited above, paragraph 29. colours signify transgression and give the consumer the 84 — See Liberteľs written observations, paragraph 7.1. impression of being freed from convention, natural tints signify authenticity and provide goods with a calming rural 85 — For example, yellow is used by Shell, Agin and BP, blue by aspect, high-tech colours (e.g. metallic green) signify ARAL, Total and ELF, red by Total and ELF, an orange security and provide reassurance because they are syn- shade by Total and Esso, an so on. onymous with perfection (Géodys 2000/2001, p. 218).

Article 2 of First Council Directive 89/104/EEC of 21 December 1988, to approximate the laws of the Member States relating to trade marks, should be interpreted as meaning that a colour per se, without shape or contour, does not constitute a sign capable of being represented graphically and of distinguishing the goods or services of one undertaking from those of other undertakings.

I - 3821