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

Monzo failed to register its “Hot Coral” color trademark

The financial company Monzo withdrawn its UK color trademark application for Hot Coral Pantone 805 C. Monzo uses this color for its bank cards.

Most likely that happened because the company had failed to register identical European trademark earlier. The Board of Appeal of the EUIPO confirmed that Pantone 805 C cannot represent a trademark because of a lack of distinctiveness.

Most consumers will perceive the color only as a decorative element, not as a sign for trade origin.

In a case like that, the onliest chance for the applicant is to prove that the sign has acquired secondary distinctiveness as a result of intense market use. However, that task can be really challenging especially when it comes to one color alone.

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.

Vita as a white trademark in The EU

The European Court has ruled in case T‑423/18 Fissler GmbH v EUIPO which concerns whether or not words describing colors can be registered as trademarks.

The background of the case is as follow:

On 27 September 2016, the applicant, Fissler GmbH, filed an application for registration of an EU a word trade mark for VITA.

The goods in respect of which registration was sought are:

– Class 7: ‘Food processors, electric; parts and accessories for the aforesaid goods’;

– Class 11: ‘Pressure cookers, electric; parts and accessories for the aforesaid goods’;

– Class 21: ‘Household or kitchen utensils and containers; cooking pot sets; pressure cookers, non-electric; parts and accessories for the aforesaid goods’.

By decision of 28 April 2017, the examiner refused registration of the mark applied for in respect of the goods concerned on the grounds that it was descriptive and devoid of any distinctive character for the purposes of Article 7(1)(b) and (c) of Regulation No 207/2009 (now Article 7(1)(b) and (c) of Regulation 2017/1001).

On 20 June 2017, the applicant filed a notice of appeal with EUIPO.

By decision of 28 March 2018 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the appeal. In the first place, as regards the relevant public, it found that the goods concerned were aimed above all at the general public, but also in part at a specialist public, for example chefs, and that the level of attention varied from average to high. It added that, as the mark applied for was a Swedish term, it was necessary to take into account the Swedish-speaking public in the European Union.

In the second place, as regards the descriptiveness of the mark applied for, the Board of Appeal, first, pointed out that the sign vita is the definite plural form of the word ‘vit’, which means ‘white’ in Swedish. Next, it found that, for the purposes of applying Article 7(1)(c) of Regulation 2017/1001, the question whether or not white was a common colour for those goods was not determinative. It was sufficient that those goods could exist in white and that the sign could be descriptive of them. After stating that the colour white was not the most common colour for ‘electronic and non-electronic’ (that is to say, electric and non-electric) pressure cookers and other household utensils, but that it was at least a fairly usual colour for those goods, it found that that showed that an average consumer would associate the goods concerned with the colour white and therefore found that the mark applied for was descriptive. Furthermore, the Board of Appeal pointed out that some kitchen utensils and household appliances are often referred to as ‘white goods’ in English and Swedish (‘vitvaror’). On the basis of an extract from the website which could be accessed via the internet address http://www.vitvara.n.nu/vad-ar-vitvaror, it deduced that some of the goods concerned, such as electric food processors or electric pressure cookers, could collectively be described as ‘white goods’. It stated that, even if that were not possible, because it is mainly large household appliances, like washing machines and dishwashers, which are described as ‘white goods’, it clearly demonstrated that the colour white was generally associated with household utensils. Lastly, it found that the mark applied for was purely descriptive.

In the third place, as regards the lack of distinctive character of the mark applied for, the Board of Appeal found that the mark applied for would be understood by the relevant public as a simple statement of fact in the sense that the goods concerned were goods that were available in white. It concluded that that mark was purely descriptive and, consequently, had no distinctive character. It took the view that any manufacturer of food processors and cooking pot sets could manufacture its goods in white and that that mark was not therefore capable of distinguishing the applicant’s goods from those of other undertakings. Furthermore, the Board of Appeal rejected the applicant’s argument that there are other registered trade marks which consist solely of colours.

The General Court annulled the EUIPO’s decision with the following arguments:

In the present case, it must be stated that the colour white does not constitute an ‘intrinsic’ characteristic which is ‘inherent to the nature’ of the goods concerned (such as food processors, electric pressure cookers and household utensils), but a purely random and incidental aspect which only some of them may have and which does not, in any event, have any direct and immediate link with their nature. Such goods are available in a multitude of colours, among them the colour white, which is not more prevalent than the others. The Board of Appeal itself acknowledges this because the website that it mentions in paragraph 23 of the contested decision states that ‘these days, [household] utensils come in all colours’.

The mere fact that the goods concerned are more or less usually available in white, among other colours, is not disputed, but is irrelevant, since it is not ‘reasonable’ to believe that for that reason alone the colour white will actually be recognised by the relevant public as a description of an intrinsic characteristic which is inherent to the nature of those goods.

Consequently, neither of the two grounds relied upon by the Board of Appeal  is sufficient to establish that there is a sufficiently direct and specific link, within the meaning of the case-law referred to in paragraph 28 above, between the term ‘vita’ in Swedish and the goods concerned. The Board of Appeal did not show that the relevant public, when faced with the mark applied for, would immediately perceive it, without further thought, as a description of those goods or of one of the intrinsic characteristics of those goods that is inherent to their nature.

Furthermore, in so far as the Board of Appeal inferred the lack of distinctive character of the mark applied for from its being understood as a simple statement of fact in the sense that the goods concerned are available in white, it must be held that the relevant Swedish-speaking public will not perceive a description of an intrinsic characteristic of the goods concerned in the mark applied for and will not be able to associate it directly with those goods. On the contrary, the term ‘vita’ requires some interpretation on the part of Swedish and Finnish consumers. Those consumers will not understand the mark applied for as a simple statement of fact according to which those goods are available in white, but rather as an indication of their origin. That is particularly so because that mark will be affixed to goods of any colour, and not only to those which are white.

The ground for refusal relied on in the present case cannot therefore preclude the mark applied for from being regarded by the relevant public as being capable of identifying the commercial origin of the goods in question and distinguishing them from those of other undertakings.