In the case of Red Bull GmbH v EUIPO, the European General Court (General Court) held that neither of Red Bull’s blue/silver colour combination trade marks were valid; this may cause concern to businesses looking to protect a combination of two colours forming part of their branding.

Background

In 2005 and 2011, Red Bull registered two blue/silver colour combination trade marks due to having acquired distinctive character through use. However, in the years 2011 and 2013, Optimum Mark sp. z o.o. requested that both Red Bull trade marks be declared invalid. The EUIPO’s Cancellation Division granted this request, the First Board of Appeal dismissed Red Bull’s appeals and now the General Court has upheld these previous decisions.

The General Court’s decision has been seen as a blow to the chances of successfully registering ‘colour combination’ marks in light of the extensive list of requirements set out in the judgement. However, there are two underlying factors to consider in more detail: graphical representation and the description.

Graphical Representation

The judgment confirms the principle that “colour per se marks” are registrable as EU trade marks but that this requires a graphic representation that satisfies criteria such as being precise and durable. The General Court stated that a graphic representation consisting of two or more colours “designated in the abstract and without contours” must be “systematically arranged by associating the colours concerned in a predetermined and uniform way”. However, this wording is contradictory because a graphic representation cannot be both ‘abstract’ and ‘uniform’. The ‘abstract’ element relates to the distinctive and registrable part of the colour combination mark. If the arrangement must be ‘systematic’ and ‘uniform’ then this cannot form part of its distinctive character, meaning that the colour element is the registrable component.

Therefore, in theory, it could be argued that if an applicant can show that the colours themselves are distinctive in the minds of consumers (as Red Bull had managed to do in their initial applications) then there should be no need to also prove that customers identify with any specific arrangement of these colours. However, registrations for “colours per se” provide extremely broad rights and could be used to prevent registration of marks in respect of which there is no risk of confusion on the part of the public. It is therefore understandable that the Courts are reluctant to grant such a monopoly.

Unexpectedly, the General Court also commented on the recent change to EU trade mark law which removed the graphical representation requirement (in para 117). The new wording now requires only that the sign be capable of being represented “in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor”. The Red Bull decision was based on the old law but the General Court highlighted that the new requirement is more restrictive than the previous wording in so far as it expressly incorporates the objectives of the Sieckmann criteria (a sign must be clear, precise, self-contained, easily accessible, intelligible, durable and objective). This was surprising as many were of the opinion that this new wording had been intended to liberalise EU trade mark law. Consequently, in practice, it may remain difficult to register a colour trade mark.

Description

The two Red Bull EU registrations for the blue/silver colour combination for energy drinks in class 32 are depicted below, along with their respective ‘descriptions’:

Mark	Description
	Protection is claimed for the colours blue (RAL 5002) and silver (RAL 9006).The ratio of the colours is approximately 50% – 50%.
	The two colours will be applied in equal proportion and juxtaposed to each other. Colours: Blue (Pantone 2747C), silver (Pantone 877C).

It is understandable that that the General Court took issue with imprecision and lack of detail on the systematic arrangement of the colours. The General Court determined that a colour ratio of 50:50 and the broad scope of the term ‘juxtaposed’ were not sufficient to determine the exact layouts because they could give rise to ‘numerous different arrangements’. For guidance on how to overcome the ‘precision’ issue, it is helpful to look at an example of an EU colour combination mark which has successfully been registered:

Mark	Description
	The trademark is a combination of the colours yellow and grey, which are arranged in this order from top to bottom in an area ratio of approximately 50% each. Colours: Yellow (“RAL 1007”), grey (“RAL 7012”).

The detailed description submitted by Putzmeister Engineering GmbH in support of their mark helps the reader visualise how the colour scheme will be used in a way which the Red Bull descriptions fail to do so. The General Court highlighted that the description plays an ‘integral part’ when deciding registrability of colour marks. Therefore, the lack of clarity in the Red Bull descriptions significantly contributed to the outcome of their case.

Conclusion

In conclusion, it is arguable that this case should be seen as one specific to its facts because the decision was based around the inadequacy of the descriptions themselves rather than as a turning point in the law relating to the inherent registrability of colour combination trade marks. However, it does highlight the strict requirements placed on applications for colour marks and the hurdles that one must overcome to be successful. In the face of this decision, and the comments of the General Court regarding the new regime, it seems that owners of colour combination marks in the abstract will face an uphill battle in securing registrations.

Amelia Skelding 25 January 2018