Reproduced with permission from WTR (World Trademark Review). This article first appeared in WTR Daily, part of World Trademark Review, in April 2025. For further information, please go to www.worldtrademarkreview.com.
The complete article is available online and can be downloaded here as PDF.
EUROPEAN UNION
Legal updates: case law analysis and intelligence
- The evidence of acquired distinctiveness must cover all EU member states, not just a substantial part or a majority
- Secondary evidence, such as sales figures and advertising material, must be corroborated by direct evidence such as consumer surveys and statements from industry professionals
- The colour combination alone, without accompanying trademarks, must be perceived by the relevant public as an indicator of commercial origin
The decision of the EUIPO’s Fifth Board of Appeal in Case R 1191/2024-5, dated 3 March 2025, concerns the colour mark of Amazonen-Werke H Dreyer SE & Co KG. The mark consists of a combination of the colours green (Pantone 7742 C) and orange (Pantone 1505 C), as depicted below:
The mark has been widely used for agricultural machines and implements, specifically field sprayers.
The case revolved around whether the mark had acquired distinctiveness through use under Article 7(3) of Regulation 2017/1001,following an initial refusal based on a lack of inherent distinctiveness. The decision emphasises the stringent requirements forproving the acquired distinctiveness of colour marks across the entire European Union, and reinforces the high evidentiary standardsset by the European instances for colour marks.
Decision
Amazonen-Werke sought to register the colour mark for agricultural machines and implements, specifically field sprayers. The initiarefusal by the examiner, based on a lack of inherent distinctiveness, was upheld by the Board of Appeal on 22 July 2022 (Case R2006/2021-5), and by the General Court on 4 May 2023 (Case T-618/22). Consequently, the proceedings focused on whether themark had acquired distinctiveness through use under Article 7(3).
The Board of Appeal's decision underscores that proving acquired distinctiveness requires extensive and comprehensive evidence.Amazonen-Werke submitted various forms of evidence, including market surveys, industry statements, sales figures, advertisingmaterials and invoices. However, the board found that the evidence was insufficient to demonstrate acquired distinctiveness acrossthe entire European Union.
One of the critical points highlighted in the decision is the necessity to provide evidence throughout the European Union. Here, theevidence primarily related to France, Germany, Hungary and Romania. The board emphasised as follows:
Although it is not necessary that evidence be submitted, in respect of each individual member state, of theacquisition by that mark of distinctive character through use, the evidence submitted must nevertheless be capableof demonstrating acquisition thereof throughout the member states of the European Union. [emphasis added]
The decision also clarifies the probative value of different types of evidence. While secondary evidence such as sales volumes andadvertising materials can support claims of acquired distinctiveness, they must be corroborated by direct evidence such asconsumer surveys and statements from industry professionals. In this case, the consumer survey conducted in France and theindustry statements from Germany were not sufficient to extrapolate brand awareness to the entire European Union.
Further, the board noted that the use of the colour combination in conjunction with other trademarks, such as the word andfigurative marks AMAZONE, did not conclusively prove that the colour combination alone had acquired distinctiveness.
Comment
This decision is a critical reminder for trademark applicants of the rigorous standards for proving acquired distinctiveness of colourmarks in the European Union. It highlights the need for comprehensive and geographically widespread evidence, as well as theimportance of demonstrating that the colour combination, on its own, is recognised as a trademark by the relevant public. Thedecision thus confirms, in line with the jurisprudence of the European instances, that proving acquired distinctiveness through use – especially for colour marks – is an uphill struggle.
