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Saturday, 3 March 2018

Sieckmann kicks in once again: when is a representation of a sign an acceptable representation for the sake of registration?

For a sign to be registered as a trade mark, one of the key requirements is that the sign is capable of being represented. The old ‘graphic representation requirement’ under the previous EU trade mark instruments has been replaced – under the umbrella of the 2015 reform – by a requirement that the sign at issue is capable of “being represented on the Register of European Union trade marks (‘the Register’), in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor.” (Article 4(b) EUTMR).
Arguably, one of the reasons for the change in the law was to make it easier to register less conventional signs as trade marks, thus overcoming the restrictive interpretation of ‘graphic representation’ as provided by the Court of Justice of the European Union in its decision in Sieckmann.
Yet, Recital 10 in the preamble to the EUTMR still mentions the 7 Sieckmann criteria: “A sign should be permitted to be represented in any appropriate form using generally available technology, and thus not necessarily by graphic means, as long as the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective.”
Having said so, would a representation like the one below (accompanied by a description) comply with all 7 criteria?

This is the issue that recently the Second Board of Appeal of the EUIPO addressed in Case R200/2017-2.
This case primarily concerns a dispute between the trade mark proprietor – Andreas Stihl – a German chainsaw manufacturer and – Giro Travel – a Romanian company that imports and trades chainsaws and other similar power tools into Romania.
A world-leading producer of chainsaws, Andreas Stihl has been selling chainsaws under its brand “Stihl” since 1971. In 2014, Giro Travel imported around 2000 counterfeit chainsaws into Romania with similar characteristics and colour schemes to that of the trade mark proprietor’s goods. In response to the action, Stihl launched a civil law suit against Giro Travel before the Bucharest Tribunal, alleging infringement of its EU trade mark.
In 2008, Stihl had in facto successfully obtained registration of the colour mark depicted above, under class 7 of the Nice Classification for goods and services such as machines, machine tools and power-operated tools.
In the application, Stihl claimed that the colour orange is applied to the top of the housing and the colour grey to the bottom of the chainsaw.
Giro Travel challenged the validity of the trade mark before the EUIPO Cancellation Division on the basis of Article 59(1)(a) – notably the issue of representation – in conjunction with 7(1)(a)(b) and (d) (lack of distinctive character and bad faith, which is outside the scope of this post) EUTMR.
The Cancellation Division
In 2016 the Cancellation Division rejected the request for a declaration of invalidity, finding that the graphic representation and the verbal description of the sign were compatible and complementary.
Mr Mukani fearing restrictive interpretations
The description of the goods and services in the EUTM application stated the following: “the colour orange is applied to the top of the housing of the chainsaw and the colour grey is applied to the bottom of the housing of the chainsaw”.
According to the Division, the verbal description, together with the attached colour representation and other elements, enabled a systematic arrangement to be identified in which colours are used in a predetermined and uniform way. Hence, economic operators would understand that the chainsaw will be orange in the top part of the housing and grey in the lower part of the housing.
In relation to the distinctive character, the Division stated that a mark may acquire distinctiveness  as a consequence of the use of that mark as part of or in conjunction with another trade mark (C-353/03 Have a break).
Therefore, the fact that the colour combination orange and grey have been used in combination with the verbal element “STIHL” would not exclude the fact that the EUTM has acquired distinctive character through use. Accordingly, it is sufficient that, in consequence of such use, the relevant class of persons actually perceive the product or service, designated exclusively by the mark, as originating from a given undertaking. Giro Travels’ claim was therefore rejected.
The Second Board of Appeal
The decision was appealed to the Second Board of Appeal, which focused on issues of representation and distinctiveness.
It is apparent from case law (notably Sieckmann) that a representation must enable the sign to be represented visually, by means of images, lines or characters so that it can be precisely identified.  The aim behind the requirements laid down in Article 4 EUTMR is to enable the public, authorities and competitors alike to ascertain what the subject-matter of the trade mark is. Accordingly, the representation must be clear, precise, self-contained, easily accessible, intelligible, durable and objective.
In relation to colour marks, CJEU case law mandates that the colours are systematically arranged in a predetermined and uniform way (C-49/02 Blau/Gelb).
It follows that the representation of the sign and its description must be evaluated together.
Applying the above criteria to the EUTM at hand, the Board held that, apart from indicating two colours, the sign’s description is confined to indicating that one colour is applied to the top of the housing of the chainsaw and the other colour is applied to the bottom of the housing of the chainsaw. The representation consists of a mere image of two colours without shape or contours, allowing several different combinations of the two colours. The description that accompanies the graphic representation of the mark does not provide any additional precision regarding the systematic arrangement association the colours in a predetermined uniform way, precluding a number of different colours of the combination of those colours. The positioning of the two colours so that the colour orange is always applied to the top of the housing of the chainsaw and the colour grey is applied to the bottom of the housing of the chainsaw can take different forms, giving rise to different images or layouts.
According to the EUIPO, any references, explanations or other elements that were provided by the applicant at the time of filing the EUTM cannot be considered to be part of the representation of the mark. This is because they do not form part of the information that can be seen in the publication of the mark in the register. Furthermore, they are only accessible to third parties if the third party studies the entire file.
Hence, if such elements were seen to form a part of the representation of the mark then such a representation would not fulfil the requirement that the mark’s representation must be clear, precise, self-contained, easily accessible, intelligible, durable and objective – in order to justify the mark’s compliance with the requirements of Article 7(1)(a) EUTMR.
The appeal was therefore upheld and the EUTM was declared invalid on the basis of Article 59 (1)(a) and Article 7(1)(a) EUTMR.

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