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Seeing Red: representing a mark consisting of a colour combination

May 25, 2021 - case_law_comment
Seeing Red: representing a mark consisting of a colour combination

Seeing Red: representing a mark consisting of a colour combination

In its first judgment since the Red Bull case in the CJEU, the General Court clarifies its approach to colour marks and Article 4 EUTMR.
24/03/2021, T‑193/18, Andreas Stihl v EUIPO, EU:T:2021:163


 

Stefan Martin, Member of the Boards of Appeal of the EUIPO and CPVO, lecturer at the CEIPI; Jonathan Boyd, EUIPO Trainee

This article reflects the views and opinions of the authors, and not the position of the EUIPO.

 

Background

On 19 December 2008, Andreas Stihl AG & Co. KG (‘the EUTM proprietor’) applied to register a colour mark for chain saws in Class 7. The sign consists of a combination of orange (RAL 2010) and grey (RAL 7035), as shown below, with the following description: ‘The colour orange is applied to the top of the housing of the chainsaw and the colour grey is applied to the bottom of the housing of the chainsaw.’

 

The application was published on 3 May 2011 and registered on 10 August 2011. On 24 June 2015 the Giro Travel Company (‘the intervener’) filed a request for the mark to be declared invalid under Article 52(1)(a) CTMR (now Article 59(1)(a) EUTMR), read in conjunction with, inter alia, Article 7(1)(a) CTMR (now Article 7(1)(a) EUTMR).

Article 7(1)(a) CTMR is as follows.

  1. The following shall not be registered:

 

(a)     signs which do not conform to the requirements of Article 4;

Article 4 CTMR is as follows.

A Community trade mark may consist of any signs capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.

In 2016, the requirement of graphical representation was removed. The sign must now be ‘represented on the Register of European Union trade marks, […] in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor’.

On 29 November 2016, the Cancellation Division rejected the invalidity application in its entirety. The intervener appealed, and on 23 January 2018 the Board of Appeal upheld the appeal, declaring the trade mark invalid (R 0200/2017‑2). The EUTM proprietor brought an action for annulment of the Board decision to the General Court (GC), alleging infringement of Article 4 EUTMR, read in conjunction with Article 7(1)(a) EUTMR. The GC allowed the EUTM proprietor’s appeal, finding that the mark complied with the requirements in Article 4 CTMR and the relevant case-law.

 

Colour combinations as trade marks

It has long been accepted that Article 4’s list of potential trade marks is not exhaustive, and the Court of Justice confirmed in Libertel (06/05/2003, C‑104/01, EU:C:2003:244) that colours per se could be registered, provided they fulfilled the function of a trade mark and met the criteria set out in Sieckmann (12/12/2002, C‑273/00, EU:C:2002:748). Although Libertel concerned a single colour, the judgment established that a combination of colours may also be a trade mark, provided that it is distinctive that it is represented so as to fulfil the Article 4 CTMR (now Article 4 EUTMR) criteria. The principle is now enshrined in Article 4 EUTMR which specifically mentions ‘colours’ in the list of signs that can be an EU trade mark. The GC starts the review in Stihl by recalling that the entry of the mark in a public register has the aim of making it accessible to the competent authorities and the public, particularly to economic operators (§ 28).

 

The representation of colour marks

In the case of single colour marks per se, a sample of the colour together with a verbal description of the colour and an internationally-recognised code constitute a proper graphic representation (§ 30). In turn, signs consisting of combinations of colours are unique in that it is inherent in their nature that they have no contours: ‘the colour per se mark may be applied, without contours, over the whole surface of the goods covered, irrespective of their shape or their packaging, which is not the case for figurative marks’ (30/11/2017, T‑102/15 – T‑101/15, Red Bull v EUIPO, EU:T:2017:852, § 75). As a limitation, the CJEU in Heidelberger Bauchemie (24/06/2004, C‑49/02, EU:C:2004:384), required that ‘a graphic representation consisting of two or more colours, designated in the abstract and without contours, must be systematically arranged by associating the colours concerned in a predetermined and uniform way’ (Heidelberger, § 31). Moreover, ‘the mere juxtaposition of two or more colours, without shape or contours’, or a reference to two or more colours ‘in every conceivable form’ does not exhibit the qualities of precision and uniformity required by Article 4 (Heidelberger, § 30). This is because:

Such representations would allow numerous different combinations, which would not permit the consumer to perceive and recall a particular combination, thereby enabling him to repeat with certainty the experience of a purchase, any more than they would allow the competent authorities and economic operators to know the scope of the protection afforded to the proprietor of the trade mark. (Idem)

This position is now reflected in Article 3(3)(f) EUTMIR.

 

The important role of the description of the sign

The role of the description of the mark is detailed in Article 3(2) EUTMIR, which provides that ‘Where the representation is accompanied by a description pursuant to paragraph 3(d), (e), (f)(ii), (h) or paragraph 4, such description shall accord with the representation and shall not extend its scope’. The description may, for instance, define the subject-matter of protection by specifying, for example, on which part of the product the colours will be applied. Where the application includes a description, the mark must be examined in conjunction with the graphic representation (§ 33); see also, 29/07/2019, Red Bull v EUIPO, C‑124/18 P, EU:C:2019:641 (the Red Bull case in the CJ, hereafter Red Bull (CJ)). The description of a trade mark must be consistent with its graphic representation (Red Bull (CJ), § 37).

The description must also be clear, precise, self-contained, easily accessible, intelligible and objective (§ 33). In Stihl, the description satisfies that requirement: the description allows the relevant consumer ‘to view a particular object, namely a chainsaw housing with two parts, the upper orange in colour and the lower grey in colour, and to recognise it at the time of purchase’ (§ 39).

 

Practical significance

Stihl is not a departure of previous case law. For signs consisting of a combination of colours, the law remains that a graphical representation which allows a plurality of conceivable reproductions that are neither predetermined nor uniform is incompatible with Article 4 CTMR and EUTMR. This is even more the case when the description raises more issues that it solves, such as ‘Protection is claimed for the colours blue (RAL 5002) and silver (RAL 9006). The ratio of the colours is approximately 50%‑50%’ (Red Bull (CJ), § 10).


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