Guest post by Florica Rus*
Over the years, many companies have sought trade mark protection for colours or colour combinations. This strategy turned out to be not a plain sailing.
Since Libertel – C-104/01 and Heidelberger Bauchemie – C-49/02 judgments, colours are recognised as a factor that may lead consumers to a purchasing decision. However, colours are considered to have a limited capacity to communicate an indication of origin to the consumers and being distinctive is not their strength.
On 22 July 2017, the General Court held that three identical rectangular coloured stripes do not make the mark distinctive enough to fulfil the commercial origin function (T-612/15). The figurative mark applied for – EUTM 012880481 (three stripes colour) for goods in classes 18, 25 and 26, was found to be neither distinctive nor to have acquired distinctiveness through use. The Court illustrated that consumers in the fashion sector are not used to identify the origin of the product based on a colour and three coloured stripes will not be apprehended as an indicator of origin.
Not surprisingly, the Court affirmed that the three stripes colour lack originality and could be perceived by the public as having a decorative function. Even taking into account that the colour stripes were always used in combination with the company`s registered mark – K WAY and the public in Italy, France, United Kingdom and the Netherlands recognised it as being an indication of origin, this was insufficient to avoid functionality or acquired distinctiveness in the EU.
Consequently, the Court confirmed the findings of previous case law where a higher level of recognition of the sign as an indication of commercial origin in one part of the EU may not make up for the lack of it in the remaining EU countries (Louis Vuitton Malletier – T-359/12). Additionally, a declaration on honour and sales figures cannot solely indicate that the public has actually come to see the sign as a trade mark.
Is this judgment one step further in the direction of giving a clearer understanding of colour marks and their distinctiveness? Certainly, in order to run away from a potential decorative function played by the colours, they must necessarily have at least a minimum degree of distinctiveness, not convey any message or meaning in relation to the goods and services and act as a ‘badge of origin’ in commercial reality.
One cannot help but wonder if, after 1 October 2017 when new provisions will enter into force as part of the second phase of the EU trade mark law reform, the colours are going to be more “trade mark friendly”. With the new provisions, colours (single or in combination) must be referred to a generally recognised colour code (i.e. Pantone, RAL or CMYK). Previously, this requirement was not obligatory and a blue colour mark could have easily cover different shades of blue. Now, a colour matching standard will ensure a colour consistency. Moreover, the requirement of graphical representation is eliminated and a description is not mandatory.
With a view to the current legal reality, likely further case law will give a clearer valuation of what is meant by decorativeness, functionality and distinctiveness when it comes to colour marks. Along the same lines, the application in the market and the enforcement of the colour marks is yet to be clarified. Would for example a bakery (goods in class 30) using a shade of orange colour for its goods, infringe the orange colour mark with a different shade owned by a confectionery company (goods in class 30), keeping in mind that consumers cannot clearly distinguish between the colours?
All in all, companies can be as original and exotic as they wish when creating a colour combination. Once they seek trade mark protection, they have to be ready for some “colourful” evidence in order to show the acquired distinctiveness.
* Florica Rus LL.M. in IP and Competition Law at Munich Intellectual Property Law Center (MIPLC). She is an Associate at BomhardIP and a Romanian lawyer.