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Red Bull's colour mark still lacks wings

The General Court of the European Union recently handed down judgment in Red Bull GmbH v EUIPO (Joined Cases T-101/15 and T-102/15). The judgment related to Red Bull's appeal against the decision of the First Board of Appeal of the EUIPO declaring two colour trade marks registered by Red Bull invalid.

The General Court of the European Union recently handed down its ruling in Red Bull GmbH v EUIPO (Joined Cases T-101/15 and T-102/15).  The judgment related to Red Bull's appeal against the decision of the First Board of Appeal of the EUIPO declaring two colour trade marks registered by Red Bull invalid.

The Background

In 2002, Red Bull applied to register the below sign as an EU trade mark in Class 32 for "Energy Drinks", with the following description: "protection is claimed for the colours blue (RAL 5002) and silver (RAL 9006). The ratio of the colours is approximately 50%-50%".  The trade mark was registered in 2005.

In 2010, Red Bull applied to register the below sign as an EU trade mark in Class 32 for "Energy Drinks". The Examiner issued a notice requiring Red Bull to specify the proportion in which the colours were to be applied and how they would appear.  Red Bull confirmed that the colours were to be applied in equal proportion and juxtaposed.  The trade mark was subsequently registered in 2011 with the indication "blue (Pantone 2747C), silver (Pantone 877C)" and description "the two colours will be applied in equal proportion and juxtaposed to each other".

In 2013, following applications made by an intervener, the Cancellation Division declared both trade marks invalid, lacking the precision and uniformity required under Article 4 of Regulation No. 207/2009 ("the Regulations").  Red Bull appealed to the First Board of Appeal, who held that acquired distinctiveness was not sufficient to override Article 4 of the Regulations.  As the registrations allow for the arrangement of the colours in numerous combinations, they were not sufficiently precise and uniform, and the appeal was rejected.

Red Bull subsequently appealed to the General Court of the EU.

The Appeal

Red Bull's appeal was based on two grounds. The first ground was the infringement of Article 4 and breach of the principles of proportionality and equal treatment.  Essentially, Red Bull claimed that the Court's approach to Article 4 of the Regulations was wrong.  This subjected colour trade marks to disproportionate and discriminatory treatment compared to other types of trade mark.  This contravened equal treatment and the principle of proportionality.

The second ground was a breach of the principle of protecting legitimate expectations. Specifically, Red Bull asserted that the EUIPO had created the legitimate expectation that the trade marks were valid as a result of (i) the Examiner requesting specific wording in the description, which was then provided and (ii) the fact the marks were registered as being valid.  As such, declaring the trade marks invalid contravened the principle of protecting the legitimate expectations of Red Bull.

The Judgment

The findings of the General Court on the grounds of appeal were as follows:

  1. To be registered, colour combinations must be (i) a sign (ii) capable of being represented graphically and (iii) capable of distinguishing the goods or services of an undertaking from those of another. In order to achieve this, the representation must satisfy the Sieckmann Criteria (being clear, precise, self-contained, easily accessible, intelligible, durable and objective).
  2. Mere juxtaposition of two colours in every conceivable form does not satisfy the criteria. Colours must be represented in a predetermined and uniform way to be registered. The evidence filed establishing acquired distinctiveness showed the different systematic arrangements of the colours.
  3. Whilst Red Bull argued that with each trade mark, what you see is what you get, the description for each mark meant, in reality this was not the case – the description went much further than the graphic representations of each trade mark.
  4. Colour marks are different to other types of trade mark meaning a greater degree of precision is required in defining them due to them being intrinsically less precise. Therefore, different treatment of colour trade marks is justified.  
  5. Applying more stringent criteria to colour marks was not disproportionate, given the purpose was to ensure the authorities were clear as to the scope of the trade mark and that proprietors could not monopolise colours.
  6. Legitimate expectations are created where specific assurances by the administration are given such as to give rise to pardonable confusion in the mind of a party acting in good faith. The Examiner had merely asked for clarification in the description – this was not an unconditional assurance that those descriptions met the legal requirements of Article 4 of the Regulations. Equally, registration of a trade mark cannot protect the proprietor from a future declaration of invalidity. The very purpose of invalidity actions is to allow examiner errors to be corrected. Therefore, no legitimate expectation was breached.

Comment

The case is another example of a colour trade mark failing to satisfy the requirements of Article 4 of the Regulations. In order to guarantee the utility of a colour trade mark, applicants submit descriptions which provide sufficient manoeuvrability when seeking to enforce the trade mark against users of a similar colour and to avoid revocation for non-use.  The issue is that the description, time and again, allows for multiple variations and renders the colour invalid as a trade mark.  Yet without this manoeuvrability, the utility of the trade mark is drawn into question.  In this instance, Red Bull was undone by their own evidence of acquired distinctiveness, which showed the colours being used in a multitude of ways, each use satisfying the description of the trade mark.

Of greater interest is the comment of the CJEU at paragraph 87: "the only way in which colours can be positioned within a contour-free space is by juxtaposing in various arrangements…such a representation results in the subject of protection afforded to the trade mark being too broad…which must therefore be clarified as soon as the application for registration is filed".

In light of this comment, registering a colour trade mark, without any delimitation or fixed arrangement could prove to be difficult without careful consideration as to the specific wording used in the description. It should also be noted that the requirement for a trade mark to be represented graphically under Article 4 of the Regulations was replaced on 1 October 2017 with new wording which simply requires the sign to be capable of being "represented, in a manner which enables the competent authorities and public to determine the clear and precise subject matter of the protection afforded to the proprietor". (The same amends to the Trade Marks Directive are due to be implemented by member states by January 2019.) Whilst this may provide some clarity for applicants, the reality is that a sign will still need to be "represented" with sufficient precision and clarity.

It will be interesting to see whether Red Bull now appeals to the CJEU.

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