No change from colour mark to figurative mark in application proceedings

The alteration of the sign or the goods and services list is no longer possible after filing a trade mark application for comprehensible reasons – at least not without loss of the priority of the filing date. However, can the category of the trade mark, that is the type of trade mark, still be altered? On this point, the EuG recently ruled, using the example of a transition from a colour mark to a figurative mark in application proceedings.

The applicant filed a colour gradient of green tones as a colour mark at the HABM for goods in Classes 7, 16 and 28. In response to the objection raised by the trade mark office that the sign as filed might lack any distinctive character, the applicant altered the category and declared that it wished to continue the application as a figurative mark. The office ultimately rejected the application in full and stated that the alteration of the type of trade mark had not been made explicitly. Furthermore, the mark lacked any distinctive character and was therefore not suitable to distinguish goods of one undertaking from goods of another undertaking. The rejection was upheld on the appeal of the applicant by the Board of Appeal of the HABM on the grounds that the alteration of the trade mark category changed the subject-matter of the trade mark application, which was not permissible in principle.

The decision of the court

The EuG confirmed this decision by judgment of 28.01.2015 (Az. T-655/13). The alteration of the trade mark category from a colour mark to a figurative mark does not serve to eliminate typographical errors or obvious inaccuracies, but rather constitutes an alteration of the subject-matter of the trade mark application. It is, in the view of the court, in principle the responsibility of the applicant to categorise his trade mark correctly. An incorrect classification may be an error, but it is not an obvious inaccuracy, particularly given that the requested alteration also affects the examination of distinctive character. This applies all the more, according to the court's reasoning, as the trade mark as filed would be suitable both as a colour mark and as a figurative mark (if it possessed distinctive character).

Conclusion

The decision is not surprising. By categorising the trade mark, the applicant has expressed his intention, so that it cannot be assumed to be an inadvertent error. This shows that adequate time should be devoted to the correct specification, in particular of the details that directly concern the trade mark, when filing a trade mark application in particular the trade mark itself, its categorisation and the goods and services list. Alterations are subsequently only possible to a very limited extent.