In the recent decision of the Second Board of Appeal of the EUIPO, the registered colour trade mark belonging to the German chainsaw manufacturer, Andreas Stihl AG & Co.KG, was held to be invalid. This decision comes only a few months after the EU General Court's finding that Red Bull's colour trade mark for blue and silver was invalid. (Our blog on the Red Bull case can be here.)
This latest decision underlines the continuing difficulty for parties to apply for and retain trade mark registrations for colours per se. It also makes clear that, despite the 2015 reforms abolishing the need for "graphic representation" of a trade mark, the Sieckmann Criteria are still very much applicable in determining the validity of a trade mark.
Background
Andreas is the market leader in gasoline powered chainsaws and had been using the colours orange and grey since 1972. In 2008, Andreas applied to register the mark depicted below, comprising the colours orange (RAL 2010) and grey (RAL 7035) with the 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." In 2011, the trade mark was registered in Class 7 for chainsaws:
In June 2015, Giro Travel Company ("Giro"), a Romanian company importing and trading in chainsaws, filed a request for a declaration of invalidity. Giro claimed the colours needed to be available for public interest: orange drawing attention to the dangerous part of the chainsaw and grey associated with the metallic components. Giro also claimed the trade mark is not clear, precise, self-contained, durable and objective. Lastly, Giro asserted Andreas was trying to monopolise a colour scheme which should be available to competitors.
The Cancellation Division rejected the request for a declaration of invalidity, holding that the graphic representation and description enables a systematic arrangement to be identified in which colours are used in a predetermined and uniform way (the chainsaw will be orange in the top part of the housing and grey in the bottom part).
Giro appealed the decision to the Second Board of Appeal on four grounds. However, only the first was considered by the Board. Giro's submission was that, pursuant to Article 59(1)(a) and 7(1)(a) of EU Trade Mark Regulation 207/2009 ("2009 Regulation"), the sign did not conform to Article 4: "the trade mark may consist of any signs capable of being represented graphically…provided that such signs are capable of distinguishing the goods or services of one undertaking from those of another".
Board of Appeal's decision
The Second Board of Appeal held that the applicable Regulation in this case was the 2009 Regulation, as it was in force when the trade mark was filed.
Regarding the first ground of appeal, the Board stated that, pursuant to the case law, colours must be represented in accordance with a specific arrangement or layout, in a predetermined and uniform way, in order to prevent numerous different combinations.
The graphic representation of the Andreas' mark consists of a mere image of two colours without shape or contours, allowing several different combinations. The only exception to this being that the colour orange is always applied to the top of the housing of the chainsaw and the colour grey is applied to the bottom. The description does not provide any additional precision with regard to the systematic arrangement as the positioning of the two colours can take different forms, giving rise to different images or layouts. The description of the mark is not clear, precise, self-contained, easily accessible, intelligible, or objective (Sieckmann Criteria).
As such, the trade mark was held invalid pursuant to Article 59(1)(a) and 7(1)(a) of the 2009 Regulation.
Comment
The case is of interest because EU Trade Mark Regulation 2017/1001 amends Article 4 so as to remove the reference to "graphic representation" and, instead, states that the sign must be capable of being represented on the register 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. Although the Sieckmann Criteria were devised to determine the scope of graphic representation, the criteria are retained in Recital 10 to the 2017 Regulation. As such, although the Second Board of Appeal did not, expressly, apply the 2017 Regulation in these proceedings, the case suggests the Sieckmann Criteria will be equally applicable in cases which are dealt with under the new regulation going forward.
The Board of Appeal stressed that, for a colour trade mark to be valid under the 2009 Regulation, its graphic representation or the accompanying description must show (1) the precise shades of the colours in question (2) the ratios and (3) their spatial arrangement. This finding is likely to be equally applicable under the 2017 Regulation.
For further discussion on some of the issues these requirements highlight, see "Colour Trade Marks: Certainty, Utility or Impossibility" (2017) 12(10) JIPLP 860.