Kärcher has enforced successfully its color trademark rights

The option for registration of a color trademark is available in most countries around the world. The problem, however, is that this is a serious challenge. In many cases, Patent Offices refuse such registration based on absolute grounds. The only option to overcome the refusal is if the applicant proves acquired distinctive character for the relevant goods or services. This means that consumers would perceive the color as a sign of trade origin.

In light of that, the German manufacturer of cleaning machines Kärcher won a lawsuit in Benelux regarding its following registered mark for international color code RAL 1018 (zinc yellow):

The company has been using this color for all of its products for many years.

The competing company Varo started to offer identical products in yellow:

Kärcher initiated a lawsuit claiming trademark infringement.

The Court agreed with the German manufacturer finding a likelihood of confusion between both colors. The Court confirmed that Kärcher’s color had acquired secondary distinctiveness due to long market use. The slight variation of the color used by Varo was not enough to overcome the possibility of confusion taking into account that the goods were identical.

This dispute shows us how valuable a color trademark can be. In order for this to happen, however, the owner should use the color carefully and consistently in the time collecting the necessary evidence for distinctive character and reputation of the color among the consumers.

Source: Taylor Wessing – Saskia Bullens for Lexology.

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Glaxo Group lost a colorful dispute in the EU

The General Court of the European Union has ruled in case T‑ 187/19, Glaxo Group Ltd v EUIPO.

It concerns an attempt by Glaxo to register the following European color trademark for inhalers and pharmaceutical preparations for the treatment of asthma and/or chronic obstructive pulmonary disease in Classes 5 and 10:

The EUIPO refused the application based on absolute grounds – lack of a distinctive character. In the appeal the Board of Appeal upheld this decision.

The BoA found that, in view of the goods, the choice of colours referred to the main active ingredients, the use for which the medicinal product is intended and its characteristics. It also found that the relevant public had a specific interest in having colours kept available for competitors in the market of pharmaceuticals, since patients are inclined to take a generic pharmaceutical product more regularly, and even more so if the presentation of the medicinal product is similar to that of the original product. The Boarded concluded that the sign was not distinctive at all.

The General Court of the EU dismissed the followed new appeal. According to the Court registration of single color is possible in very limited cases and under specific circumstances., otherwise such a color cannot be perceived as a source of trade origin.

The evidence submitted by Glaxo for an acquired secondary distinctiveness was not enough to overcome this conclusion.

For example, it wasn’t clear whether the provided opinion surveys in only 10 Member States were representative or not. The Court considers small samples (100-200 people) as not reliable.

Apart from this, the interviewees, whether healthcare professionals or patients, were shown only one image representing a shade of the colour purple. They were therefore not asked to choose from several images or even shades which one could spontaneously be associated with a particular undertaking.

The originals of the colour samples annexed to the surveys carried out in certain Member States include a shade of purple different
to that of the other samples, or even represent a certain type of inhaler and not a colour.

The Court regarded the sales data and advertisement materials only as secondary evidence which may support, where relevant, direct evidence of distinctive character acquired through use, such as that provided by the surveys.

Source: Alicante News.

Off-White can be a trademark in the EU

The US fashion company Off-White succeeded to register the following European combined trademark:

The classes of goods mentioned in the application were:

• Class 3, including soaps for personal use, perfumery and colognes; 
• Class 9, including glasses and sunglasses; 
• Class 14, including jewellery, cufflinks and watches; and 
• Class 20, including pillows and cushions. 

The EUIPO issued a refusal against this application based on absolute grounds – Article 7(1)(b) and (c) of Regulation 2017/1001 (the EU Trade Mark Regulation, or EUTMR.

The word part of the mark OFF-WHITE can be a descriptive characteristic for the mentioned goods because it means a color that is close to white with a grey or yellow tinge.

The Board of Appeal upheld this position for classes 9 and 20 and for “watches, wall clocks, horological and chronometric instruments; watch bands; presentation boxes for watches; and jewellery cases” and “precious stones; and semi-precious stones” in Class 14.

In the appeal, however, the General Court of the EU annulled this decision. According to the Court, although color is a product’s characteristic it can be descriptive if only it is an intrinsic, permanent characteristic inherent to the nature of the goods. This was not the case when it comes to Off-White because the mentioned goods can be offered in variety of colors. There is no single color that to be deeply connected to their nature as goods.

Apart from this the Court considered that off-white color cannot create an aesthetic value for the goods which to be a reason for purchasing because color is a subjective matter and every consumer has a different preference in that regard.

Source: IPKat.

Hitachi lost a colorful trademark dispute in Japan

The Japanese company Hitachi Construction Machinery applied for the following color trademark in Japan for classes 7 and 12:

The Japan Patent Office refused this application based on absolute grounds – lack of inherent distinctiveness. The sign consists only of a single color – orange without contours.

Hitachi  limited the goods only to ‘hydraulic excavators’ and appealed the decision.

According to the company, most of the consumers would connect this particular color with the Hitachi’s excavators because it has been used for them since 1974. What’s more the company has 20% market share in the country regarding these machines.

The Japan High IP Court dismissed the appeal. The orange color is widely used especially in the construction and agriculture industries. In general it is used as a safety sign-color aiming to prevent incidents. It is adopted for different helmets, rain suits, guard fens, work clothes etc. Other companies use similar color too for their goods.

The Court wasn’t convinced that consumers perceive orange as a Hitachi only color because the company uses white as a color for its products too.

This case is quite interesting and similar to many such cases in Europe where regurgitation of a single color is a real challenge. You can read stories for the cases of Cadbury, Deutsche Telekom, Monzo, which shows how difficult this goal is.

Source: Masaki MIKAMI

The Deutsche Telekom pink color trademark is under attack

The 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

The 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:

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

The UKIPO has ruled in oppositions against the following trademark applications all for class 30, filed by Cadbury:

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

– № 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.

– № 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.