Red Bull lost a colorful lawsuit in the EU

paint-2985569_960_720.jpgThe European Court has ruled in case C‑124/18 P Red Bull GmbH v EUIPO. The case which concerns color trademarks has the following background:

Red Bull filed an application for registration in respect of the combination of two colours per se reproduced below:

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By a communication dated 30 June 2003, the appellant submitted additional documents to prove the distinctive character acquired through use of that mark. On 11 October 2004 the appellant submitted a description of the mark that was worded as follows:

‘Protection is claimed for the colours blue (RAL 5002) and silver (RAL 9006). The ratio of the colours is approximately 50%–50%.’

The goods in respect of which registration was sought are in Class 32 ‘Energy drinks’.

The trade mark was registered on 25 July 2005 under number 002534774, with an indication that it had acquired distinctive character through use and the description referred to in paragraph 10 above.

On 20 September 2013 Optimum Mark filed an application with EUIPO for a declaration that the trade mark was invalid.

In support of its application, Optimum Mark contended, first, that the trade mark did not meet the requirements of Article 7(1)(a) of Regulation No 207/2009 since its graphic representation did not systematically arrange the colours by associating them in a predetermined and uniform way and, secondly, that the description of the trade mark, according to which the ratio of the two colours of which the mark was composed was ‘approximately 50%–50%’, allowed for numerous combinations, with the result that consumers would not be able to make further purchases with certainty.

As regards Case T‑102/15, on 1 October 2010 the appellant filed a second application for registration of an EU trade mark with EUIPO relating to a combination of colours per se, as reproduced in paragraph 9 above, in respect of the same goods as those referred to in paragraph 11 above.

On 22 December 2010 the examiner issued a notice that the formal requirements had not been met and consequently requested that the appellant specify ‘in which proportion the two colours will be applied (for example, in equal proportion) and how they will appear’.

On 10 February 2011 the appellant indicated to the examiner that ‘in compliance with [the examiner’s] notification dated 22 December 2010, [the appellant] herewith informed [EUIPO] that the two colours will be applied in equal proportion and juxtaposed to each other’.

On 8 March 2011 the second trade mark was registered on the basis of distinctive character acquired through use, with the colours being given as ‘blue (Pantone 2747C), silver (Pantone 877C)’ and the following description: ‘The two colours will be applied in equal proportion and juxtaposed to each other’.

On 27 September 2011 Optimum Mark filed an application with EUIPO for a declaration that that mark was invalid, contending, first, that it did not meet the requirements of Article 7(1)(a) of Regulation No 207/2009 and, secondly, that, on account of the fact that the term ‘juxtaposed’ might have several meanings, the description of the trade mark did not indicate the type of arrangement in which the two colours would be applied to the goods and was therefore not self-contained, clear and precise.

By two decisions of 9 October 2013, the Cancellation Division of EUIPO declared the two marks in question (‘the marks at issue’) invalid, inter alia on the ground that they were not sufficiently precise. The Cancellation Division relied on the fact that they allowed numerous different combinations which would not permit the consumer to perceive and recall a particular combination, thereby enabling him to make further purchases with certainty.

Red Bull filed notices of appeal against those two decisions before the Board of Appeal of EUIPO.

By two decisions of 2 December 2014 (‘the decisions at issue’), the First Board of Appeal of EUIPO dismissed both appeals, considering, in essence, that the graphic representation of the marks at issue, evaluated in conjunction with the accompanying description, did not satisfy the requirements of precision and durability laid down in the judgment of 24 June 2004, Heidelberger Bauchemie, (C‑49/02, EU:C:2004:384), according to which marks consisting of a combination of colours must be systematically arranged in such a way that the colours concerned are associated in a predetermined and uniform way. According to the First Board of Appeal of EUIPO, the marks at issue allowed for the arrangement of the two colours in numerous different combinations, producing a very different overall impression.

The European court upheld the EUIPO decisions regarding both of the marks. The main problem is their descriptions which don’t give a precise idea of how exactly they are used as trade indications for the relevant goods. This can create different combinations of their real representations in the consumer mind which is against the trademark theory.

In a nutshell, when it comes to color trademarks it is really important what descriptions these mark will have because the descriptions themselves will define the real borders and forms of the signs. This, in turn, is necessary in order for the signs to be perceived as a source of origin.

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