Since as long ago as 2002 Red Bull have been attempting to obtain, but more importantly retain a registered EU trade mark (‘EUTM’) for a combination of blue and silver for its famous energy drink product.

The latest in a number of decisions by the relevant EU authorities, on this occasion the EU General Court, T-101/15 and T-102/15 Red Bull v EUIPO, maintained a previous decision of the EU Board of Appeal to the effect that two previously granted such trademarks should be cancelled as invalid. The basic reason given for this was that these marks were lacking in sufficient precision as to the scope of the monopoly covered.

Colour trade marks, like other non-traditional types of trade marks ( eg sounds, smells , shapes etc), can be registered as trade marks if they are: (1) a sign, (2) capable of being represented graphically and (3) capable of distinguishing the goods or services of one undertaking from those of others. Since 1 October 2017 graphical representation has no longer been a requirement due to the new EUTM Regulation (Regulation No 2017/1001) but that did not apply here.

Despite such non-traditional marks being capable of registration, these have proved notoriously difficult to register, since their inception some 25 years ago, due to the need for them to overcome various hurdles. Essentially they must be indicative of the source or origin of the goods or services concerned and be distinctive of them or at least be capable of being so. In the case of an EUTM this distinctiveness through use must be established EU wide. As above such marks also require to be sufficiently precise and uniform. The rationale for these rules is of course that trade marks give their owners monopolies over their use. Thus if it were possible to register one for say the colour yellow without any further specification this would potentially prevent 3rd parties from all use of that colour in the area of commerce concerned. Whilst therefore it makes considerable sense to be very careful about assessing the merits of such applications before granting them, does this latest Red Bull case perhaps suggest that the restrictions in play have gone too far and, even if not, that the nature of these is not at all clear?

In the case of Red Bull the court ruling of November 30 2017, dealt with two EUTM applications for “energy drinks” in class 32. The first, 2002 application, had a description stating that “the ratio of the colours is approximately 50%-50%”. It was granted in 2005 based on evidence of distinctiveness through use. Red Bull then filed an application for a second mark for the same colour combination in 2010. This one stated that “the two colours will be applied in equal proportion and juxtaposed to each other”. Again the European Union Intellectual Property Office (EUIPO) registered this mark on the basis of acquired distinctiveness.

The validity of both was then challenged with success by a 3rd party in 2013.The EUIPO Cancellation Division found that the marks were invalid as they were devoid of distinctive character under article 7(1)(b) of the Community trademark regulation. It said they comprised the “mere juxtaposition of two or more colours designated in the abstract and without contours”. Red Bull appealed but this finding was upheld by the EUIPO First Board of Appeal in December 2014. Again Red Bull appealed, this time to the General Court and the recent 30 November 2017 judgment indicated that whilst colours and colour combinations can be registered as trade marks the graphical representation must also be ‘clear, precise, self-contained, easily accessible, intelligible, durable and objective”. This means, said the court, that “a sign must always be perceived unambiguously, uniformly and durably”.

In this case, the graphical representation of the Red Bull marks “allowed several different combinations of the two colours” and the accompanying descriptions “did not provide additional precision with regard to the systematic arrangement associating the colours in a predetermined and uniform way”. The court therefore dismissed the action and upheld the Board of Appeal decision. Red Bull can now appeal against the ruling to the CJEU.

Whilst Red Bull is without doubt recognised as an iconic product closely associated by the public with this colour combination should the latter be allowed to be trademarked? On the face of it, it does seem to deserve some form of registered IP protection. However if the former descriptions had been accepted they would possibly have allowed Red Bull to prevent use of the 2 colours/similar shades for any drink (and arguably given its fame for any product even if dissimilar) where they were used 50/50 and next to each other. That could for example cover use of stripes / dots etc. in the respective colours. So one can see a basis of the EUIPO’s concerns and perhaps anticipate that the CJEU will, on undisclosed policy grounds, find ample reasons to refuse any appeal.

As far as trade marks go how could the description given be any more precise? One obvious option would be to simply register a depiction or various depictions of the branding as a logo mark. That would of course limit the scope for enforcement/protection and to change /evolve the branding and maintain the protection. However similarity can always be argued depending on the case. Alternatively an EU registered design could have been filed for the design. This would have covered its use for any product and could be enforced to stop 3rd party use of a similar design subject to that not producing a substantially different effect on the informed user.

As above the graphical representation requirement has been removed from the new EUTM Regulation, which applies from October 1 last year. It is now possible to gain 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.’ Will this mean it will be any easier to register colour combinations as EUTMs? Certainly on the face of it there may be scope for new ways to represent these marks and more flexibility in that regard. However the General Court suggested quite the opposite in its decision saying, at paragraph 117. that the removal of the graphical representation requirement will have the effect of creating a more restrictive regime. This result would be somewhat unexpected as the general view in the trade mark community had been that the intention was to create more flexibility and to get away from being boxed in by the strict need for the graphical representation.

The outcome of any appeal by Red Bull will be of great interest even if under the old law but the outcome is likely to be once again ‘coloured’ by the perceived need to keep trade mark colour monopolies as limited as possible.