Coloured trademarks: clarifications by the General Court of the European Union in the light of the precision and consistency criteria of art. 4 of Regulation no. 207/2009

Through a ruling of 30 november 2017 in Joined cases T-101/15 e T-102/15 the General Court of the European Union clarified the methods for the valid registration of a colour or a combination of colours as a trademark.

The subject of the case-in-point were the EU coloured trademarks registered by Red Bull GmbH shown below:

and two actions for invalidity had been brought against them, both accepted by the Invalidity Division of EUIPO.

In particular, the Invalidity Division, had held the two disputed trade marks as invalid by stating that their graphical representation – even if matched by a description – amounted to a “simple juxtaposition of two or more colours designated in abstract terms and without borders”; such a representation therefore would have been unable to determine the subject to protection granted by the two ownerships.

Two different appeals were filed against the two decisions made by the Invalidity Division, that were both rejected by the EUIPO Appeals Commission, whose rulings were subsequently challenged by Red Bull GmbH before the Court of Justice of the European Union.

The EU Judge, in ruling on the challenged decisions, established that for a trademark to be valid the colours or combinations of colours mut meet the requirements laid down in art. 4 of Regulation no. 207/2009 and therefore:

– they must represent a valid sign;

– the sign can be the subject of a graphical representation;

– the sign itself must be suitafle for distinguishing the products or services of a given company from those of other companies.

From the foregoing it follows that the mere juxtaposition of two or more colors without form or borders could not constitute a valid trade mark, since – according to point 47 of the ruling in question – the criteria of precision and consistency required by the Article 4 above would not be complied with.

Indeed, such a representation would not enable the consumer to perceive and memorize a particular combination that he could use to reiterate, with certainty, a shopping experience as it would not allow competent authorities and economic operators to know the scope of the rights protected by the trademark owner.

Moreover, not even the descriptions that accompanied the graphic representation of the controversial trade marks gave further clarifications about the systematic arrangement of colours but, rather, the use of terms such as “about” and “juxtaposed” contributed to reinforce the imprecise character of the representation as well as increase the conviction that protection of these trademarks would have given rise to many different combinations that certainly would not have allowed the consumer to perceive and memorize a particular combination.

The European Judge – therefore – rejected the appeal brought by Red Bull GmbH and upheld the decisions of the Board of Appeal, ruling that the latter had correctly reached the conclusion that the graphic representation of the trademarks at issue – accompanied by a description that only provided the proportions of the two colours – could not be considered as sufficiently precise and consistent.

Basically, these signs, as represented and described, could not have constituted a valid trademark whose main function, we recall, is exactly that of indication of origin.

Giulia Mugnaini

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