In Joined Cases T-101/15 and T-102/15 Red Bull v EUIPO, the EU General Court (“GC”) has found invalid two EUTM registrations for Red Bull’s blue/silver colour combination set out above.
Red Bull had successfully demonstrated acquired distinctiveness for the above colour combination – so the GC’s decision was not based on the distinctiveness of the marks.
Instead, the marks were deemed invalid because in each case the description accompanying the graphical representation rendered the scope of the registrations unclear.
The first registration (no. 2534774) used the description “Protection is claimed for the colours blue (RAL 5002) and silver (RAL 9006).The ratio of the colours is approximately 50% – 50%”.
The second registration (no. 9417668) used the description “The two colours will be applied in equal proportion and juxtaposed to each other. Blue (Pantone 2747C), silver (Pantone 877C)”.
Article 4 of the EUTM Regulation, as interpreted in the case law of the Court of Justice of the EU (“CJEU”), requires that the representation of an EUTM is “clear, precise, self-contained, easily accessible, intelligible, durable and objective”.
The GC, agreeing with the Board of Appeal, found that the graphic representation of the marks “allowed several different combinations of the two colours” and that the descriptions in each case “did not provide additional precision with regard to the systematic arrangement associating the colours in a predetermined and uniform way”.
This seems a correct decision by the GC and an appeal to the CJEU is perhaps unlikely to be successful. However, given the commercial importance of these registrations to Red Bull, they may well take this matter to the next and final level.
It is clear, however, that the legislation and case law (not to mention the overriding policy considerations) all point towards clarity of the scope of a trade mark monopoly being critical to its validity.
Clients with colour combination marks in need of protection might not welcome this decision at first glance but it does confirm that it is possible to register a distinctive colour combination as long as it is accompanied by a suitably precise description.
As the court stated, the requirement is for a precise description meaning that the resulting registration would be for a colour combination described as being in one specific systematic spatial arrangement only.
This type of narrow registration would, arguably, be significantly less effective as a weapon against infringers and look-a-like brands. Having said that, the GC’s additional guidance here will assist brand owners in obtaining valid registrations for their distinctive colour combinations and, ultimately, a broad but unenforceable registration is of no use to anyone.
Authored by Andrew Clemson