CJEU clips Red Bull’s wings
On 29 July 2019, the Court of Justice of the European Union (“CJEU”) rejected the appeal filed by Red Bull GmbH (“Red Bull”) against the judgment of the European General Court (“EGC”) of 30 November 2017, upholding the finding that the colour combination blue/silver as filed was not eligible for protection as a Community trade mark [CTM – now: European Union trade mark (EUTM)] (Case C-124/18 P).
As background, in 2005 and 2011, respectively, two CTMs (now EUTMs) for the blue/silver colour combination for energy drinks in Class 32 were registered in the name of Red Bull on the basis of distinctive character acquired through use. The first mark’s description read “Protection is claimed for the colours blue (RAL 5002) and silver (RAL 9006). The ratio of the colours is approximately 50%-50%.”, while the second mark included the description that “the two colours will be applied
in equal proportion and juxtaposed to each other”.
The applications for invalidity filed by Optimum Mark sp. z o.o. in 2011 and 2013, respectively, were upheld in all instances, which found that the marks at issue did not satisfy the requirements placed on representations of CTMs (now EUTMs) according to Articles 4 and 7(1)(a) of the former Community Trade Mark Regulation (CTMR). This finding has now been confirmed by the CJEU.
In support of its appeal, Red Bull put forward the following five grounds, which were all rejected:
- Breach of the principles of equal treatment and proportionality: According to Red Bull, the EGC had wrongly taken into account the “intrinsically less precise nature of colour per se marks”, their limited ability to convey some precise meaning and competition considerations, therefore reducing them to mere figurative, pattern or position marks in colour. The CJEU, however, considered that the EGC had correctly applied settled case law which required the systematic arrangement of a colour combination in order not to unduly restrict the availability of colours for other traders.
- Infringement of Articles 4 and 7(1)(a) CTMR: In this ground, Red Bull argued that the EGC had misinterpreted the judgment Heidelberger Bauchemie (Case C-49/02) by holding that marks consisting of a combination of colours must systematically specify the spatial arrangement of these colours and had therefore (1) infringed the rule that a mark must be viewed as filed, not having regard to the specific features of marks consisting of a combination of colours (which is not to have contours), (2) found that marks consisting of a combination of colours must include a description of the graphic representation, whereas such a description has always been left to the discretion of the parties, and (3) incorrectly taken into account the actual use that was made of the marks at issue to establish that their graphic representation allowed a multitude of arrangements.
In this respect, the CJEU recalled that, according to earlier case law, a sign may be registered as a mark only if the applicant for the mark provides a graphic representation in accordance with the requirement in Article 4 CTMR, to the effect that the subject matter and scope of the protection sought are clearly and precisely determined. Where the application is accompanied by a verbal description of the sign, that description must serve to clarify the subject matter and scope of the protection. By citing its previous judgment Heidelberger Bauchemie, the CJEU stated that a graphic representation of two or more colours, designated in the abstract and without contours, must be systematically arranged in such a way that the colours concerned are associated in a predetermined and uniform way, which is not met by the mere juxtaposition or a reference “in every conceivable form”. Against this background, the CJEU confirmed that the two graphic representations and descriptions in question do not comply with the aforementioned requirements. This is also shown, according to the Court, by the evidence filed by Red Bull, which reproduced those marks very differently in comparison with the vertical juxtaposition of the two colours shown in the graphic representation. Contrary to what Red Bull had submitted, requiring a mark consisting of a combination of colours to display a systematic arrangement associating the colours in a predetermined and uniform way cannot transform that type of mark into a figurative mark, since that requirement does not mean that the colours must be defined by contours. Finally, considering that the marks at issue were registered on the basis of distinctive character acquired through use, the European Union Intellectual Property Office (EUIPO) and then the EGC were entitled to take into account the actual use of those marks within their assessment of Article 4 CTMR.
- Breach of the principle of legitimate expectations: Red Bull claimed that – according to the judgments in Brandconcern vs. EUIPO and Scooters India (C‑577/14 P) and in EUIPO vs. Cactus (C‑501/15 P) – the requirements stemming from Heidelberger Bauchemie should not apply retroactively but only to marks registered after the delivery of that judgement, and that the EUIPO’s initial view that the mark was valid should be upheld. However, the CJEU found that Red Bull cannot successfully rely on these judgments, since they did not concern an absolute ground for invalidity/had overturned the practice of the EUIPO which had previously been set out in one of its communications (thus not being comparable to the case at issue). Further, in the Court’s view, that the marks at issue were initially registered by the EUIPO is not such as to bind the EUIPO in the future (in fact, the examination of distinctive character does not mean that the requirements of Article 4 CTMR are met).
- Breach of the principle of proportionality: According to Red Bull, the EGC had failed to examine whether the decisions at issue are disproportionate and to allow the appellant to clarify the description of the marks at issue in order to prevent them being declared invalid. Since in its application before the EGC, Red Bull sought the possibility of amending the marks at issue on the basis not of the principle of proportionality, but the principle of legitimate expectations, this claim was considered a new plea in law and therefore rejected as inadmissible.
- Infringement of Articles 134(1) and 135 of the Rules of Procedure of the EGC: In Red Bull’s opinion, the EGC should not have ordered it (Red Bull) to pay the costs of the proceedings. To the contrary, given the exceptional nature of the case, the EUIPO should have been ordered to pay the costs of the proceedings on equitable grounds. Nevertheless, pursuant to Article 58 of the Statute of the Court of Justice of the EU, no appeal shall lie regarding only the amount of the costs or the party ordered to pay them. Consequently, since all the other grounds of appeal were unsuccessful, the CJEU rejected this ground as inadmissible.
Considering the current strict requirements placed on the graphic representations of “colour per se” marks, this judgment does not come as a surprise. What we can learn from this is that in practice it remains difficult to register colour per se marks as EUTMs and that, when applying for such marks, particular attention has to be paid to a – precise and clear – description and to the proper delimitation of the mark in order not to unduly restrict the availability of colours for other traders. In the meantime the law has been amended. Article 4 EUTMR does no longer require a graphic representation of the sign. However, according to this Article, the sign still needs to be 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”. Against this background, and with a view to the above judgment of the CJEU, it is unlikely that the approach regarding the assessment of “colour per se” marks will in the future change significantly.
Do you have questions? Please contact: Kristin Lüder
Practice Groups: Intellectual Property, Commerce & Trade