Securing colour trade mark registrations in the EU can be challenging. The EU trade mark Registry faces the difficult task of balancing the rights provided in the EUTMR against the strong public interests in keeping colours free for all to use. Red Bull’s latest defeat at the CJEU (C-124/18 P - Red Bull v EUIPO) confirms that registering a combination of two colours requires information about the colours to be registered as well as a precise description of how these colours will be applied when in use. This decision demonstrates the difficulties brand owners may face in obtaining and retaining broad registered protection for colour combinations.
Background of the Dispute
Although Red Bull had secured two registrations for the colour combination blue and silver, based on evidence of acquired distinctiveness, Declarations of Invalidity were filed against Red Bull’s two EU colour-combination mark registrations No. 002534774 (registered in 2005) and No. 009417668 (registered in 2011) by Optimum Mark. The marks consisted of a combination of the colours blue and silver covering energy drinks in class 32 represented as: .
Optimum Mark claimed that Red Bull’s first registration did not meet the basic requirements of a trade mark as its representation did not systematically arrange the colours by associating them in a predetermined and uniform way and hence could not be a guarantee of origin. They said the description “Protection is claimed for the colours blue (RAL 5002) and silver (RAL 9006). The ratio of the colours is approximately 50%–50%” allowed for numerous combinations, meaning that consumers could not repeat purchasing decisions with confidence.
In respect of Registration No. 009417668, Optimum Mark claimed the description of the mark being “The two colours will be applied in equal proportion and juxtaposed to each other. Blue (Pantone 2747C), silver (Pantone 877C)” could have several meanings and therefore was not self-contained, clear and precise. It failed to determine the type of arrangement in which the two colours would be applied to the goods.
In the first instance, the EUIPO Cancellation Division found both registrations to be invalid on the grounds that their representation was not sufficiently clear and precise. Red Bull appealed these decisions, to the First Board of Appeal of EUIPO and then the General Court who came to the same conclusion.
Determined to maintain their rights, Red Bull appealed to the CJEU on five grounds, However, on 29 July 2019, the CJEU released their judgement dismissing the appeal and held that the General Court had correctly found the registrations to be not sufficiently ‘clear and precise’.
Strong consideration should be given when planning trade mark filing strategies for brands that are predominantly represented by colours. As evidenced by the CJEU decision, the importance of a clear and precise description is vital in securing a valid registration in the EU. Based on this judgment, a description must indicate the exact type of arrangement of the colours when applied to the goods.
Owners of colour-combination brands should consider a variety of different forms of protection including figurative marks, and by protecting packaging getup using registered designs. Such protection would allow such owners enforcement rights against a range of goods provided the use does not produce a substantially different effect on the informed user.
Should you have any questions concerning your IP rights in relation to colour marks or otherwise please do not hesitate to contact one of our IP Practitioners based in London.
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