On 29 July 2019, the CJEU rejected Red Bull's appeal to set aside the EU General Court's judgment which had upheld the Board of Appeal's decision to invalidate Red Bull's colour trade mark.
(See Red Bull's colour mark still lacks wings for our earlier blog reporting the General Court's judgment in November 2017.)
In 2002, Red Bull applied to register the below sign as an EU trade mark (EUTM) 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 EUTM 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".
Following applications made by an intervener, the EUIPO Cancellation Division declared that both trade marks were invalid for lacking the precision and uniformity required under Article 4 of EUTM Regulation 207/20009 (replaced by 2017/1001). This finding was upheld by the First Board of Appeal and the General Court.
CJEU's dismissal of the appeal
Red Bull put forward the following five grounds of appeal, each of which was rejected by the CJEU:
- The General Court had infringed the principles of equal treatment and proportionality – it had wrongly taken account of the intrinsically less precise nature of colour per se marks, their limited ability to convey precise meaning and competition considerations regarding colours. The CJEU held that the General Court had correctly applied settled case law which required consideration of the availability of colours for other traders and required the colour combination to exhibit a systematic arrangement.
- The General Court had misinterpreted the CJEU's judgment in Heidelberger (C-49/02) – it had wrongly held that colour combination marks must systematically specify the spatial arrangement, it infringed the rule that a trade mark must be viewed as filed, the description of the marks was not inconsistent with the graphic representation and marks consisting of a combination of colours should not be reduced to a single figurative arrangement. The CJEU held a mark must be graphically represented with any description serving to clarify the subject matter. In this case, the description of Red Bull's trade marks reinforced the lack of precision in the graphic representation which was capable of various manifestations making it incapable of being perceived in a predetermined and uniform way.
- The General Court had infringed the principle of protection of legitimate expectations – the first Red Bull mark was registered before the judgment in Heidelberger so it ought not to apply and the EUIPO's initial view that the mark was valid ought to be upheld. The CJEU held that the fact the trade marks had been registered by the EUIPO did not bind the EUIPO in the future and preclude it being declared invalid.
- The General Court had infringed the principle of proportionality – it had failed to examine whether the earlier decisions are disproportionate and failed to allow Red Bull to clarify the descriptions of the marks. As a new plea in law, this was not capable of being argued before the CJEU.
- The General Court had infringed Articles 134 and 135 of its Rules of Procedure by ordering Red Bull to pay the costs of the proceedings – given the exceptional nature of the case the EUIPO ought to have paid the costs of the proceedings on equitable grounds. The CJEU held that, where all other grounds of appeal have been rejected, an appeal cannot be based on the amount of costs and the party ordered to pay them under Article 58 of the Statute of the Court of Justice of the EU.
In dismissing the appeal, the CJEU ordered Red Bull to pay the costs of the appeal.
Existing CJEU jurisprudence suggests that the prospects of successfully registering and maintaining a colour per se trade mark are fading. It will be interesting to see if there is any divergence in the UK's approach to colour per se trade marks after Brexit, if and when the UK leaves the EU.
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