It's not easy being green: Enercon v EUIPO (Gamesa)

In August 2001, Enercon filed an application to register the mark as shown below in connection with “wind energy converters, and parts therefor”. The trade mark application listed the mark as a “colour mark”, and a description of the colours was provided using a colour code. The mark proceeded to registration in January 2003.

In March 2009, Gamesa Eólica, SL (Gamesa) filed an application for a declaration of invalidity on the basis that the mark had been registered contrary to Article 7(1)(b) (namely, the mark lacked distinctive character), and Enercon had acted in bad faith when filing its application.

In December 2010, the Cancellation Division found in Gamesa’s favour, declaring the mark invalid as it essentially defined the way in which the colours could be applied to a wind turbine tower.

The winds of change at First Board of Appeal

In January 2011, Enercon appealed, and the First Board of Appeal annulled the Cancellation Division’s Decision. The Board of Appeal held that:

1. The mark was a 2D shape made up of colours, rather than a colour mark per se (ie, the mark was re-categorised).
2. The mark was sufficiently distinctive since it did not represent a 3D wind turbine tower or a colour mark.
3. The mark was not descriptive and did not fall foul of Art 7(1)(e)(ii) (the shape of goods which is necessary to obtain a technical result) as the mark was neither a colour mark nor a 3D wind turbine.
4. There was no evidence that the mark had been applied for in bad faith: the Cancellation Division’s Decision was based on the fact that green, or a blend of several shades of green, could not be registered in connection with the goods since an EU mark should not hinder the application of national legislation intended to limit the visual impact of the turbines from the ground, whilst ensuring the upper parts remain visible to aircraft.

Seeing green at the General Court (part I)

Gamesa brought an action before the General Court (GC) for the annulment of the First Board of Appeal decision, though Enercon did not participate in proceedings. Gamesa claimed that:

1. The First Board of Appeal should not have re-categorised the mark as a figurative mark, when it was registered as a colour mark.
2. There was an infringement of the principle of functional continuity.
3. The First Board of Appeal had failed to take account of the bad faith demonstrated by Enercon.

In its decision from November 2013, the GC dismissed plea (2), but ultimately annulled the First Board of Appeal decision, agreeing with Gamesa that the First Board of Appeal had erred by re-categorising the contested mark as a 2D figurative mark made up of colours. The GC did not go on to examine the distinctive character of the mark.

Going round in circles: back to the Board of Appeal (via the Court of Justice)

Enercon then appealed to the Court of Justice in January 2014. However, as Enercon had not filed any submissions before the GC, the Court of Justice held that it had not participated in the proceedings and therefore was not entitled to appeal the GC’s decision. The appeal was dismissed as inadmissible.

The case was then remitted to the Second Board of Appeal, which issued a decision in October 2015 (the contested decision). The Second Board of Appeal held that the mark needed to be considered “as registered” (ie, as a colour mark), and found that it consisted of different shades of green and white, limited to a specific form and arrangement. It went on to hold that the contested mark lacked distinctive character as it simply conveyed an aesthetic/decorative quality, rather than functioned as an indicator of origin.

The green colours would be interpreted as denoting ecological or environmentally friendly credentials such that the mark was considered to be entirely mundane.

The Second Board of Appeal concluded wind energy converters to be high-value capital goods which consumers would not purchase based on their decoration. Instead, consumers would rely on word marks or trade names to provide precise information regarding trade origin.

Overall, it was held that the mark lacked distinctive character.

The Second Board of Appeal remitted the case back to the Cancellation Division to make an assessment as to whether the mark had acquired distinctiveness through use.

The GC refuses to turn over a new leaf (part II)

Enercon appealed to the GC, seeking the annulment of the contested decision. At the hearing, Enercon tried to adduce new evidence to demonstrate that the classification of the mark could not affect its distinctive character, and argued that the code assigned to the registration by the European Union Intellectual Property Office (EUIPO) did not correspond to the code used for “colour marks”. However, the evidence was declared inadmissible as Enercon did not provide reasons why it could not have produced the materials earlier. Further, it was noted that Enercon could have applied to register a figurative mark if that had been its intention.

As such, the GC found that the Second Board of Appeal was correct in its assessment that the mark should not be re-categorised. The Second Board of Appeal did not err, and the EUIPO was correct to hold that the “upright trapezoidal shape” depicted in the mark did not form part of the protection sought, but only provided an indication as to how the colours would be applied to the goods at issue.

The GC agreed with the Second Board of Appeal’s finding that the contested mark lacked distinctive character: the colour green is associated with nature, and wind energy converters are often located in green areas.

The applicant argued that the mark consisted of five separate colours and white, though the GC disagreed, holding that the mark consisted of five shades of the same colour and white, such that the gradation would be seen as blending rather than a combination of separate colours. The use of green colourings would enable to the goods to blend in, thus reducing their visual impact when in situ, and as such the mark did not have the inherent capability to indicate trade origin. Enercon’s argument that the specific colour combinations and the overall shape of the contested mark were capable of denoting origin was rejected. Rather, the GC followed the Second Board of Appeal’s view that green, as a colour of nature, indicated that the goods were ecological or environmentally friendly. The relevant public would draw that same conclusion, and would be prevented from seeing the shades of green as an indication of origin of the goods.

Overall, the colours on the lower part of the turbine shaft were held to be devoid of distinctive character, as they had the aim of enabling the goods to blend into their environment.

It was not disputed that wind turbines are not installed in urban areas, but in agricultural or forest areas. The GC agreed with the Second Board of Appeal that the relevant public would not purchase wind turbines based on their decoration or external presentation, but rather would be guided by other indicators, such as trade names and word marks.

Case details at a glance

Jurisdiction: European Union
Decision level: General Court
Parties: Enercon GmbH v EUIPO (Gamesa Eólica, SL)
Citation: T‑36/16
Date: 03 May 2017
Decision: http://dycip.com/enercongamesa