The Deutsche Telekom pink color trademark is under attack

pexels-photo-1111367The insurance company Lemonade initiated a legal proceeding against Deutsche Telekom. The reason for this is a claim by the German telecom that Lemonade uses the pink color for its marketing which infringes the Deutsche Telekom registered EU trademarks for that color.

As it is well-known, Deutsche Telekom has used pink and its different shades for its brands for many years.

According to Lemonade, this accusation is unacceptable because it tries to monopolize one of the main colors in the spectrum.  What’s more, the German telecom is not even in the same industry as Lemonade.

For the time being, Lemonade stoped to use this color for its activities.

Of course, when you have a well-known brand, especially in the case of colors, where the protection is not so stable and clear, every trademark owner tries to safeguard its brand value. The subtle moment in this approach is to what extent this can happen in reality.

Source: WIPR.

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.

Partial success for Cadbury over color trademarks dispute in the UK

night-photograph-starry-sky-night-sky-star-957040.jpegThe UKIPO has ruled in oppositions against the following trademark applications all for class 30, filed by Cadbury:

GB50000000003019362.jpg– № 3019361, with the following description: The colour purple (Pantone 2685C), as shown on the form of application, applied to the packaging of goods.

GB50000000003019362.jpg– № 3019362, with the following description: The colour purple (Pantone 2685C), as shown on the form of application, applied to the whole visible surface of the packaging of the goods.

GB50000000003019362.jpg– № 3025822, with the following description: The colour purple (Pantone 2685C), shown on the form of application.

Against these applications Nestle filed oppositions with the following arguments:

  • The reference in the description to a Pantone number is a necessary but not
    sufficient condition for the Application to comply with Section 1(1);
  • The reference in the description to something “being shown on the form of
    application” does not comply with the requirement of being self-contained,
    intelligible and/or accessible. The application form does not form part of the
    public register and those consulting the public register are unable to ascertain
    from that the nature of the material referred to in the description.
  • The reference in the description to something being “applied to the packaging
    of the goods” imports a reference to a means of configuration or
    representation which is not shown on the register and which may comprise a
    potentially limitless number of signs/means of representation.
  • The reference in the description to “the whole visible surface” is inherently
    ambiguous because the public and competitors will assume – and the
    applicant intends – that less than the whole visible surface is in fact meant by
    the words “whole visible surface” since products of this kind must of necessity
    bear words, logos and other elements of different colours on the surface of
    the packaging.

The UKIPO agreed that in the case of trademarks 3019361 and 3025822 their descriptions create ambiguity regarding what exactly these signs represent.

Regarding trademark 3019362, however, the UKIPO considered that the above-mentioned conclusion is not relevant because the trademark’s description gives an idea of what exactly trademark dimensions are.

Source: WIPR.

The Black and white trademark color dominance in Sweden is over

sunnana-harbour-2914389_960_720.jpgHans Eriksson published an intriguing article for IPKat discussing the issue on color assessment of trademarks in Sweden.

Until that moment, the Swedish practice in that regard was to accept that trademarks in black and white covers all color combinations for the purpose of trademark assessment in case of disputes.

Not any more. The Swedish Patent Office and the Swedish court change that position implementing the European court decision in case C-252/12 Specsavers, according to which the registration of a trademark in black and white cannot be granted a scope of protection that automatically covers all possible color combinations.

Sweden alongside Denmark and Norway was one of the few countries in the EU which has continuously used this broader approach in color assessment of trademarks.

This change of the local practice will reflect on all future applicant who has to bear in mind that when they build their trademarks strategies for the territory of Sweden.

The full article can be found here.

Beats Electronics won a trademark case in the EU

pexels-photo-577769.jpegThe Board of Appeal of the EUIPO has ruled in a case regarding an application for the following European trademark applied for classes 9 (apparatus for recording, transmission or reproduction of sound or images), 35 (business management, business administration, market research services, export services), and 38 (telecommunication services, in particular mobile telephony, broadcasting of radio and television programmes):

beats1

Against this application, an opposition was filed by Beats Electronics based on the following earlier European trademarks for classes 9 (audio and video equipment including audio players, video players, media players, portable media players), 38 (providing online bulletin boards in the fields of media, music, video, film, book and television for the transmission of messages among users), and 41 (nightclub services, dance club services, provision of live entertainment and recorded entertainment) of the Nice Classification. EUTM 2 was for the same goods and services, with the addition of Class 42 (providing an interactive online network website, via electronic communication networks):

Initially, the EUIPO’s Opposition Division dismissed the opposition stating that there is no possibility for consumer confusion concerning both signs despite the identical and similar goods. The claim for trademarks with reputation by Beats Electronics was dismissed as not proved.

The decision was appealed and the Board of Appeal reversed it finding that the Opposition Division erred in its conclusions.

According to the the Board, both trademarks are similar and can create confusion amongst the consumers. The arguments behind this position were that both signs have similar visual elements as well as colors. The differences are not enough to overcome similarities. What’s more the earlier marks have a reputation on the market which was proved by the owner.

Source: Nedim Malovic, IPKat.

Brief IP news

briefs_1131. CJEU in C-395/16, Doceram vs. CeramTec, interprets the concept of technically required features of appearance excluded from protection under Community designs Regulation. For more information here.

2. Colour it mine: protecting colour trademarks. For more information here.

3.  Euro-PCT Guide: PCT procedure at the EPO. For more information here.

Source: Intellectual Property Center at the UNWE. More information can be found here