Red Bull has lost its appeal in the EU General Court to trade mark the combination of the colours blue and silver which appear on the packaging of its energy drinks.

Background

Red Bull GmbH (“Red Bull”) first filed an EU trade mark application in 2002 to protect its blue/silver colour combination in Class 32 (‘Energy drinks’). The mark was graphically represented (as below) and included a description which stated that ‘the ratio of the colours is approximately 50%-50%’.

 

In 2010, Red Bull filed a second application for the colour mark in the same class, using the same graphic representation but a different description – ‘the two colours will be applied in equal proportion and juxtaposed to each other’.

Both marks were registered by the EUIPO in 2005 and 2011 respectively on the basis of distinctive character acquired through use but their validity was later challenged by Optimum Mark sp. z o.o. (“Optimum Mark”).

The Cancellation Division found both marks to be invalid in October 2013.

The reasoning for the decision included a finding that the marks constituted the ‘mere juxtaposition of two of more colours, designated in the abstract and without contours’ and therefore did not meet the requirements for a mark to exhibit precision and uniformity.  The mark was not seen as being capable of ‘distinguishing the goods or services of one undertaking from those of other undertakings’.

It was found that the combination of the graphic representation of the mark and its accompanying description allowed numerous different combinations of the colours, which could prevent consumers from being able to recognise and rely upon the mark.

The First Board of Appeal upheld this decision in December 2014 and the case was taken by Red Bull to the EU General Court with the decision handed down on 30 November 2017 [joined cases T-101/15 and T-102/15].

The Decision

The EU General Court began by outlining the three conditions that colours or combinations of colours must satisfy in order to constitute an EU trade mark.

 

(i)  They must be a sign;

(ii) That sign must be capable of being represented graphically, so that it can be precisely and clearly identified by both the authorities and third parties;

(iii) The sign must be capable of distinguishing the goods or services of one undertaking from those of other undertakings.

It further clarified that ‘a graphic representation consisting of two of more colours, designated in the abstract and without contours, has to be systematically arranged by associating the colours concerned in a predetermined and uniform way’.

In the case of Red Bull’s trade marks, the Court held that the Board of Appeal was right in finding that both the graphic representation and the descriptions allowed ‘several different combinations of the two colours’ and failed to provide a way of ‘precluding a number of different combinations of those colours’.

In examining the specific descriptions filed by Red Bull (i.e. ‘the ratio of the colours is approximately 50%-50%’ and ‘the two colours will be applied in equal proportion and juxtaposed to each other’), the Court concluded that juxtaposition ‘does not necessarily constitute a systematic arrangement’ and that whilst it indicates the direct placing of two or more colours side by side, this can take many forms.

Similarly, the Court found that the graphic representation of the two juxtaposed colours accompanied by an indication in percentage terms of their respective proportions was insufficient for the purpose of determining the systematic arrangement of those colours.

It was also noted that the evidence submitted by Red Bull to prove that its marks had acquired distinctiveness through use, did not show the marks in the same way that they appear in the graphic representation filed with the applications. The Court viewed this as an acknowledgement by Red Bull that the graphic representation of the contested marks allows for different interpretations ‘which are neither predetermined in advance nor uniform’, and therefore cannot be protected.

The Court also found that the argument put forward by Marques, who advocated in support of Red Bull, was incorrect in this case.  Marques had argued that the marks would meet the requirements of ‘precision and uniformity’ if you applied the ‘what you see is what you get’ rule (i.e. the graphic representation as filed and as visible (‘what you see’) is the only subject matter of the protection afforded by the mark (‘what you get’).  The Court disagreed in this case.

Our Analysis

Trade mark applications for colours on their own and even combinations of colours have always been more difficult to prosecute through to registration, with evidence of acquired distinctiveness generally being required.

The Court’s decision reinforces the point that ambiguities in the scope of a colour mark, resulting from an accompanying description for example, leads to it falling short of the necessary standard of precision and clarity required for registration.

The EUIPO has made it clear that the filing of trade marks for a single colour or combination of colours requires a reproduction of the colour and a reference to a generally recognised colour code (e.g. Pantone).  For combinations of colours (without contours), it is necessary to reproduce the colour combination that shows the systematic arrangement of the combination in a uniform and predetermined manner.  A description can be added, but this must accord with the representation and not extend its scope.

This conforms with the EUIPO’s application of the “what you see is what you get rule” for marks consisting of combinations of colours.

There is no easy way of obtaining broad registered protection for colours on their own or combinations of colours, particularly given the application of the “what you see is what you get” rule.  However, trade mark protection for a distinctive colour or a combination of colours can be a very powerful asset in a trade mark owner’s portfolio and so such marks should always be considered where appropriate.

If you would like any advice on trade mark protection, please get in touch to speak to one of our attorneys.