No protection for Red Bull's blue/silver colour trade mark

In its long-awaited judgment dated 30 November 2017, the European General Court (“EGC”) decided that the colour combination blue/silver is not eligible for European Union trade mark protection (Joined Cases T-101/15 and T-102/15). With this decision, the EGC upheld the decision by the First Board of Appeal of the European Union Intellectual Property Office (“EUIPO”) that had cancelled the two disputed colour trade marks belonging to Red Bull GmbH (“Red Bull”) in invalidity proceedings. Red Bull can still appeal the decision to the European Court of Justice (“ECJ”).

In 2002 and 2010, Red Bull applied for two EU trade marks for the blue/silver

colour combination  for energy drinks in Class 32 of the Nice Agreement. The first application contained the note “Protection is claimed for the colours blue (RAL 5002) and silver (RAL 9006). The ratio of the colours is approximately 50%-50%.” The second application included the description that “the two colours will be applied in equal proportion and juxtaposed to each other”.

The EUIPO registered the trade marks due to acquired distinctive character through use. In the years 2011 and 2013, Optimum Mark Sp. z o.o. (Optimum Mark) requested that both Red Bull trade marks be declared invalid. The EUIPO’s Cancellation Division granted this request on the grounds that the trade marks did not satisfy the requirements placed on representations of European Union trade marks (Art. 7(1)(a), 4 of the new European Union Trade Mark Regulation - EUTMR). The First Board of Appeal of the EUIPO dismissed Red Bull’s appeals and found that the trade marks (i.e. the graphic representation and accompanying description) were not precise or uniform enough because they allowed “for the arrangement of those two colours in numerous different combinations, producing a very different overall impression”.

Now the EGC has upheld the decisions in the previous instances. Citing the ECJ’s leading judgment, Heidelberger Bauchemie GmbH, dated 24 June 2004 (Case C-49/02), the EGC emphasised that a combination of colours may constitute a trade mark, but that this requires a graphic representation that satisfies criteria such as being precise and durable. In cases (such as this one) in which application is made for two colours “designated in the abstract and without contours”, this is only ensured, the EGC said, if they are “systematically arranged by associating the colours concerned in a predetermined and uniform way”. The mere combination or designation of the colours without form or contour “in every conceivable form” does not satisfy the requirements of being precise and durable. Such representations “would allow numerous different combinations which would not permit the consumer to perceive and recall a particular combination, thereby enabling him to repeat with certainty the experience of a purchase. In addition, it would not allow the competent authorities and economic operators to know the scope of the protection afforded to the proprietor of the trade mark.”

According to the EGC, in this case, the two trade marks did not stand up to these requirements placed on the graphic representation. The mere juxtaposition of two colours without form or contour was said to allow numerous different combinations of the two colours. According to the EGC, the accompanying descriptions likewise did not provide enough guidance for a precise and systematic arrangement of the colours. “While, admittedly, juxtaposition indicates the direct placing of two or more colours side by side, they may be so placed in a number of different arrangements. That juxtaposition can thus take different forms, giving rise to different images or layouts, while still being in a ‘ratio of … approximately 50%-50%’ or ‘in equal proportion’”. Thus, it determined that a ratio in percentage of the two colours to each other is not sufficient to determine their exact layout. The fact that the abstract scope of protection encompassed by the trade marks extended beyond two juxtaposed rectangles was said to have been evidenced by the documents submitted by Red Bull that show various arrangements of blue and silver.

The EGC pointed out that, although the principle of “What you see is what you get” applies, i.e. what can be seen is what is protected, this is circumvented if the proprietor claims a scope of protection that is broader than the protection afforded by the graphic representation or which does not correspond to it.

This judgment confirms, on the one hand, the principle that “colour per se marks” are registrable as European Union trade marks. On the other hand, it emphasises the strict requirements placed on the graphic representations of such marks. Especially in cases in which the systematic (predetermined and durable) arrangement of the colours is not apparent from the graphic representation, the addition of a precise and clear description becomes all the more important. Thus, the EGC has established when a description is not to be seen as sufficiently precise and clear. When a description is, however, seems unclear. Consequently, in practice it remains difficult to register a colour per se mark as a European Union trade mark.