It’s becoming more and more difficult to register colour trademarks in Europe, even when such trademarks are undoubtedly well-known. Just recently, two well-known brands suffered drawbacks concerning their attempts to register colour (combination) marks, namely shoe designer Christian Louboutin and energy-drink producer Red Bull:

No wings for Red Bull's colour trade mark

The EU's General Court recently rejected Red Bull's claim on the following blue and silver colour combination in joined cases T-101/15 and T-102/15, on grounds that the trademark’s representation – a juxtaposition of two colours, without any further systematic arrangement - was not precise enough. The trademark in question is displayed above on the left side.

Red Bull had filed its first application back in 2002, along with a description stating that "the ratio of the colours is approximately 50%-50%". The second application from 2010 included a description stating that "the two colours will be applied in equal proportion and juxtaposed to each other". Both marks were registered by EUIPO on the basis of acquired distinctiveness, but after registration, a polish company challenged the validity of Red Bull's trademarks. Three years later, the Cancellation Division found that the marks were invalid, because they were not precise enough.

Under the EU Trademark Directive, the graphic representationof colour (combination) marks must be, clear, precise, objective, self-contained, intelligible, easily accessible and durable. Applications must contain a description and the designation of the colour using an internationally recognized identification code.

According to the Cancellation Division, Red Bull’s marks did not meet these standards, since the "mere indication of the ratio (…) allowed for the arrangement (…) in numerous different combinations (...)". In other words, the marks – as represented graphically – were considered too broad, on the grounds that a representation merely based on the colour ratio would theoretically cover endless variations (e.g. different shapes and depictions, as long as the colour ratio remains the same). This would create an unjustified trade mark monopoly.

This decision was upheld by the First Board of Appeal and the General Court. It sets the bar high as regards the formal requirements for registering a colour (combination) mark: Businesses are well advised to design their mark so that the colour(s) form a specific arrangement and add a clear description precisely explaining the actual representation (and thus, the scope) of the mark.

Are Loubotin’s red soles only part of the shoes’ “shapes”?

In Louboutin v Van Haren, AG Szpunar has taken the position that Louboutin's trademark protection rulings from 2010 for "footwear" and 2013 for "high-heeled shoes" in the Benelux might be invalid. The trademark is displayed above on the right side.

In 2012, Louboutin filed a lawsuit against Van Haren, a Dutch company also selling shoes with red soles, stating that Van Haren's shoes infringed Louboutin's trademark registered for "the colour red applied to the sole of a shoe". Van Haren had then to cease its production and sale of its products, but the company appealed the decision.

The appellate court (District Court of The Hague) was not sure about the validity of Louboutin’s trademark and requested a preliminary ruling in June 2017, arguing that the "Louboutin" trademark consists exclusively of "the shape which gives substantial value to the goods" - which is a reason to refuse registration of the trademark under the Trade Mark Directive . The CJEU was essentially asked to answer the question whether the word "shape" in the meaning of the Trade Mark Directive also includes its colour.

In his first opinion rendered in June 2017, GA Szpunar concluded that such shapes like Louboutin's red sole may be deemed a "shape" within the meaning of this provision. However, because the case was assigned to the Grand Chamber and the oral procedure reopened, GA Szpunar had to deliver a new opinion.

In his second opinion rendered in February 2018, Szpunar maintained his earlier view, further explaining that Loubotin’s mark consists of the shape of the goods and seeks protection for a colour in relation to that shape, rather than as a colour mark per se. He adds that the question whether the shape does ‘give substantial value’ to the goods (thereby resulting in the refusal of the trademark application) must be determined without taking into account the reputation of the mark or its owner. This would be bad for Louboutin and similar brand owners: Courts would determine whether the sole gives substantial value to the shoe in an abstract manner, ignoring the fact that Louboutin has acquired a special reputation for the sole as an element of design.

This case touches on an interesting question: Is a combination of a certain colour applied to a certain part of the goods’ shape (here: the sole) more than simply the (functional) shape of the good, as intended by Art 4 para 1 lit e (iii) of the Trade Mark Directive? And should the reputation of the product or brand be ignored when answering this question? It will be interesting to see how the CJEU decides.

Both cases show: Registration of colour trademarks has never been more difficult. Applications for colour trademarks can fail for formal reasons even when it acquired distinctiveness is not questioned.