Decisions relating to the shades of colors filed as CTMs are rare enough to be worth mentioning. This one related to the orange shade shown below and filed in class 7 for ‘articulated robots to handle, treat and weld, with the exception of clean room robots, medical robots, and robots to apply lacquer; parts for the above goods’. The Examiner and the Board of Appeal concurred in finding that this mark could not get registered as it lacked distinctiveness. The General Court confirmed on September 13, 2010.
The Court pointed out that distinctiveness without any prior use is inconceivable save in exceptional circumstances. In the present case, the applicant had not submitted evidence before the Board of Appeal allowing to hold that there were exceptional circumstances. The applicant also failed to submit evidence showing that, in the relevant sector, the colors of industrial robots are generally perceived as indicating their commercial origin.
The decision illustrates that gaining registration for a CTM representing a shade of color is not an impossible task (there are a few shade color trademarks registered actually). But preparing, collecting and selecting appropriate evidences proves to be one of the key routes to usually consider as the OHIM remains in practice otherwise rather reluctant to allow registration to such marks. Other circumstances (mentioned in the decision), such as the number of goods or services for which the mark is claimed which should preferably be very restricted and the existence of a very specific relevant market, are other possible aspects considered.