A recent decision by the EU General Court highlights the difficulties in protecting colour trade marks in the EU. Red Bull had registered two European Union Trade Marks for its blue and silver colour combinations in 2002 and 2010. Both applications included the same colour trade mark (depicted below) but the descriptions accompanying the marks differed. The 2002 application included the description “the ratio of the colours is approximately 50%-50%” whereas the 2010 application’s description was “the two colours will be applied in equal proportion and juxtaposed to each other”.
Both European Union Trade Marks secured registration on the basis of acquired distinctiveness through use. However, the Polish company Optimum Mark applied to invalidate the trade mark registrations. The case went all the way to the EU General Court. Ultimately, the Court held that the registrations were indeed invalid.
The Court’s reluctance to keep the registrations in force stems from its finding that the blue and silver graphic representation along with the accompanying descriptions allowed for too many different combinations of the two colours to be sufficiently precise and ascertainable. Essentially, the Court held that the scope of protection afforded to Red Bull’s marks was ambiguous as well as too broad.
Unfortunately, the decision does not give much practical guidance as to how trade mark owners can protect their colour combinations in future trade mark applications. The Court did state that “an explicit description of the systematic arrangement associating the colours in a predetermined and uniform way would have been required in the present case.” However, it did not expand on this vague statement.
Historically, it has proven difficult to register colour and colour combinations as European Union Trade Marks. Absent acquired distinctiveness, it is near impossible. While evidence of acquired distinctiveness has usually enabled colour trade mark applications to proceed to registration, this recent decision has introduced additional hurdles to jump over, namely the requirement of an “explicit description of the systematic arrangement associating the colours in a predetermined and uniform way”. Therefore, trade mark owners would be advised to include as precise and narrow a description as possible when filing colour mark applications. Such a description combined with evidence of acquired distinctiveness should assist in registering colour marks. Furthermore, if a company wants to protect the overall appearance of its product (which may include colours important to its visual branding), it should consider registered Community design protection, subject to meeting the novelty/originality requirements.