The EU General Court has upheld a decision of the EU Board of Appeal to cancel two Red Bull EU trade marks (EUTMs) consisting of combinations of the colours blue and silver.
Prior to Regulation 2017/1001, under the regime applicable in this case, a mark could only be registered as an EUTM if it was:
- a sign,
- capable of being represented graphically, and
- capable of distinguishing the goods or services of one undertaking from those of others.
Red Bull registered a trade mark for the colour combination blue and silver in class 32 ('Energy drinks') in 2002, in which the application stated that "the ratio of the colours is approximately 50%-50%." Red Bull successfully submitted a second EUTM application in 2010 concerning the same graphic representation, but in which the description given was that the two colours were to be "applied in equal proportions and juxtaposed to each other." Both applications were accepted by the EUIPO on the basis that the signs had acquired distinctive character through long-term and intensive use.
A Polish company, Optimum Mark, filed an application for a declaration of invalidity against both marks in 2013. The Cancellation Division and later, the Board of Appeal, both agreed, respectively granting and upholding the declaration of invalidity. Red Bull in turn appealed the declaration to the EU General Court.
The EU General Court confirmed the invalidity of the registrations on the basis that neither mark met the requirements of what constitutes an EUTM. In particular the General Court stated that the graphical representations of the Red Bull marks "allowed several different combinations of the two colours" and that the descriptions "did not provide additional precision with regard to the systematic arrangement associating the colours in a predetermined and uniform way." The General Court stated that a graphical representation must be "clear, precise, self-contained, easily accessible, intelligible, durable and objective" and that “a sign must always be perceived unambiguously, uniformly and durably”. Red Bull now have the option to appeal the decision to the ECJ.
Under Regulation No 2017/1001, which came into force on 1 October 2017, the requirement that an EUTM be capable of being represented graphically no longer applies. Instead it is now possible to gain a trade mark registration where the mark is 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." This would seem to indicate a better likelihood of obtaining EUTMs for colours, however the General Court disagreed in its decision, stating that the new wording "is more restrictive than the previous wording" because it "expressly incorporates into the body of that provision the objectives identified in the judgments Sieckmann and Heidelberger Bauchemie", i.e. that a sign will be registrable if it can be represented in any form, "as long as the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective." This is surprising, as many trade mark experts saw the removal of the graphical representation requirement as allowing more flexibility by allowing for the registration of signs that can be represented in any appropriate form, not just graphically.
The General Court's decision highlights the continued reluctance of the EU authorities to grant trade mark monopolies over colours.