In assessing the distinctiveness of a particular sign as a trade mark, the public interest underlying the ground for refusal must also be taken into account. This interest consists in avoiding unjustified restrictions on the availability of the sign for other traders offering comparable products.^[1] There is no interest in granting protection to a trade mark that cannot guarantee the origin of the products designated.^[2] The indication-of-origin function and the public interest thus merge into one another.^[3] With regard to the protection of this public interest, the question of whether registration of the sign is sought for a wide range of products or for a specific product or a specific group of products is important when assessing distinctiveness, along with the other circumstances of the specific case.^[4] It is more likely that a trade mark that is problematic in terms of distinctiveness will be registered for a specific product than for a wide range of products or for products under a broad generic term.
For example, the abstract shade of orange per se, without any territorial limitation, is distinctive in relation to consultancy services relating to crop production, but is not distinctive in relation to agricultural, horticultural and forestry products. The use of colours, including shades of orange, is not uncommon for agricultural, horticultural and forestry products. Therefore, the relevant public is more likely to perceive the colour applied for as a mere decorative feature of the goods in question. By contrast, in the case of consultancy services, a colour does not in itself constitute the services, nor does it confer any substantial value upon them. The public is able to distinguish between the use of a colour as a mere decorative element and its use as an indication of the commercial origin of the service.^[5] There is also a case for refusing to allow the monopolisation of works of art, which are no longer protected by copyright, as a means of identifying products in the public interest and for denying them trade mark protection.^[6]
In this context, the CJEU states, somewhat unfortunately,^[7] that the number of products for which registration of the trade mark is sought is also significant. The greater the number of products, the more likely it is that the exclusive right conferred by the trade mark may prove to be excessive and thus run counter to the maintenance of a system of undistorted competition and the public interest, that the availability of certain signs for the other economic operators offering comparable products is not unjustifiably restricted. Furthermore, it is also not beneficial for economic development and entrepreneurship if established economic operators can register all the signs that are actually available – such as the available colours – to the detriment of new economic operators.^[8]
It is hardly possible to interpret this wording as meaning that the number of products is actually the deciding factor. Rather, the decisive factor will be the type and nature of the individual products for which the registration of the trade mark is sought. This is because the number of products could be manipulated by filing several parallel applications or by subsequently purchasing further trade mark rights, without the need for protection of other economic operators being any less in this case.
Thus, it will not be possible to reject the application for registration of the abstract colour orange simply because protection was claimed for a large number of products. Rather, the protectability for each of these products will have to be examined individually and the application will have to be partially rejected if necessary.