UK: ECJ Blues (and Yellows): A Recent Decision on Combinations of Colours per se

Last Updated: 9 February 2005
Article by David Stone

A decision of the European Court of Justice (ECJ) on 24 June 2004 confirms the registerability as trade marks of combinations of colours per se. Brand owners may wish to review their portfolio to ensure they are fully taking advantage of trade mark protection for colours.

For many years, traders have used colours or combinations of colours to distinguish their goods and services from those of other traders. Think of the distinctive blue used by jewellery retailer Tiffany - sight of that distinctive blue box instantly conveys the source of the excitement inside. Colours can be evocative and memorable at a deep sensory level - fine attributes for a trade mark.

Since the European Union’s trade marks Directive of 1988, European trade mark registries and courts have struggled to define the circumstances in which colours will be allowed registration as trade marks. The ECJ’s 2003 decision in Libertel answered many of the issues in relation to single colour marks per se, confirming that such marks are registerable in limited circumstances.

The European Union’s trade mark registry, OHIM, has allowed registration of a number of combinations of two or more colours.

In light of the ECJ’s recent decision in Heidelberger Bauchemie GmbH (ECJ, Case C- 49/02, 24 June 2004), it is likely that none of these registrations remains valid, because the ECJ has significantly raised the hurdle for registration of colours per se.

THE CASE BEFORE THE ECJ German company Heidelberger applied to the German Patent Office for trade mark registration of the colours blue and yellow - "the applicant’s corporate colours which are used in every conceivable form, in particular on packaging and labels".

Appropriate international colour chart references were given in the application. Registration was sought in relation to a range of building supplies.

The German Patent Office rejected the application on the grounds of lack of distinctive character. Heidelberger appealed to the Bundespatentgericht, which referred two questions to the ECJ, asking, in short, whether combinations of colours per se are registerable as trade marks, and, if so, in what circumstances.

THE ECJ’S DECISION The ECJ’s analysis started with a three-step test for registerability for combinations of colours per se:

1. the combination of colours per se must be a sign;

2. the sign must be capable of being represented graphically; and

3. the sign must be capable of distinguishing the goods or services of one undert aking from those of other undertakings.

The first two issues had been dealt with by the ECJ in Libertel and its 2002 decision on smell trade marks, Sieckmann. Building on the Sieckmann requirement that the graphical representation of a trade mark be "precise and durable" in order to enable other traders to know the extent of the registrant’s rights, the ECJ in Heidelberger held that a graphic representation consisting of two or more colours "must be systematically arranged by associating the colours concerned in a predetermined and uniform way". Specifically, the ECJ rejected Heidelberger’s claim to use blue and yellow "in every conceivable form": this would not provide the "precision and uniformity" required by other traders.

In relation to the third test, the ECJ again relied on Libertel, holding that "save in exceptional cases, colours do not initially have a distinctive character, but may be capable of acquiring such character as the result of the use made of them in relation to the goods or services claimed". In short, the ECJ required that applications for registration of a combination of colours per se be backed up by proof of acquired distinctiveness. This is the United States position, where proof of secondary meaning is required prior to registration of a colour.

COMBINATIONS OF COLOURS ARE NOW MORE DIFFICULT TO REGISTER Counter-intuitively, a combination of colours, which might be thought to be more distinctive than one colour on its own, is now more difficult to register than a single colour. The ECJ has decided that an application for a combination of colours must include a "systematic arrangement associating the colours concerned in a predetermined and uniform way", a requirement not laid down for single colour marks.

The ECJ has not backed the Advocate-General’s opinion by requiring an applicant for a combination of colours per se trade mark to specify how those colours appear on packaging, buildings, staff uniforms etc, although this is likely to be the practical outcome of the decision in many cases.

COMMENT Heidelberger confirms that combinations of colours per se are registerable as trade marks within the European Union. But in setting a new requirement for a "systematic arrangement", the ECJ has provided no guidance on what that might entail. Further decisions will hopefully clarify this issue and provide some consistency across the European Union, including to assist registries in their examination of applications. What remains more important, however, is how broadly these registrations will be interpreted. This will depend on how aggressively trade marks for combinations of colours per se are enforced by their owners, and the scope given to the registrations by Europe’s courts and tribunals.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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