On 29 July 2019, the Court of Justice of the European Union (CJEU) held​ that Red Bull’s signature blue and silver colour trademarks were invalid. This followed an earlier decision by the General Court of the European Union in 2017 which found that the graphic representation and description of the two colours were not sufficiently precise.

The threshold for successfully registering a trademark consisting of a single colour or combination of colours has been set purposefully high, in order to avoid situations where a large company is able to effectively monopolise a particular colour within a particular class of goods or services. A company seeking to register a colour trademark must demonstrate that their mark has acquired distinctiveness, and be able to describe it in a sufficiently clear and precise manner.

Background

In 2002, Red Bull filed an application to register a trademark in respect of the blue and silver colour combination used on their energy drinks. Accompanying documents were submitted in order to provide evidence that the colour combination had acquired a distinctive character in the marketplace through use. A description of the specific shade of blue (RAL 5002) and silver (RAL9006), and the approximate ratio in which they would be represented was also provided.

The trademark successfully proceeded to registration, with an indication that it had acquired distinctive character through use. However in 2013 a third party (Optimum Mark) filed an application with the EU Intellectual Property Office (EUIPO) which sought to declare that the mark was invalid. The grounds for their objection were that Red Bull’s trademark did not arrange the colours in a predetermined and uniform way, and that the description of the colour ratio as “approximately 50% – 50%” allowed for multiple potential combinations of the colours.

In 2011, Red Bull registered a second blue (Pantone 2747C) and silver colour mark (Pantone 877C) (also on the basis of distinctive character acquired through use), described as applying “in equal proportion and juxtaposed to each other”. Optimum Mark again filed an application for a declaration that the mark was invalid, on the basis that it the mark was not self-contained, clear and precise.

The EUIPO declared both of the colour marks to be invalid on the basis that the trademarks as registered allowed for numerous different colour combinations. This was considered to be capable of causing confusion among consumers.

Red Bull appealed the decisions to the Board of Appeal for the EUIPO and the Registry of the General Court, however were unsuccessful on both occasions. In rejecting the appeals, the General Court determined that the use of the word “approximately” in the description for the first colour mark evidenced the general imprecision of the graphic representation. For the second colour mark, the use of the word “juxtaposed” was the main issue. The General Court considered that the colours could be juxtaposed so as to give rise to different images or layouts whilst still maintaining equal proportion, and that the registration was therefore insufficiently clear and precise.

CJEU Appeal

Red Bull advanced the following five grounds in support of their appeal to the CJEU:

1) The General Court had infringed the principles of equal treatment and proportionality reflected in Article 4 and 7 of Regulation No 207/2009 on the Community trade mark, by treating trademarks consisting of a combination of colours unequally as compared to other types of trademarks.

The CJEU rejected this ground of appeal as unfounded. The requirement that a combination of colours must be systematically arranged in a predetermined and uniform way was a necessary one, in order not to restrict the availability of colours for other companies offering similar goods or services.

2) The General Court had misinterpreted the judgment in Heidelberger Bauchemie (C-49/02), by holding that trademarks consisting of a combination of colours must systematically specify the spatial arrangement of the colours in question. Red Bull claimed that the judgment in that case should be restricted to its own specific context (i.e. a colour trademark for which the description stated the colours were to be used ‘in every conceivable form’).

This argument was rejected on the basis that a trademark registration which allowed for multiple reproductions, that were not pre-determined or uniform, was incompatible with Article 4 of Regulation No 207/2009 and incompatible with settled case law.

3) In its third ground of appeal, Red Bull claimed that the principle of protection of legitimate expectations had been infringed, as the EUIPO’s previous positions had given rise to an expectation on their part as to the validity of the colour trademarks.

The CJEU did not accept any of the arguments advanced on this ground, as Red Bull had not successfully identified a positive act of the EUIPO which was capable of giving a precise, unconditional and consistent assurance that the marks would not be declared invalid.

4) By their fourth ground of appeal, Red Bull claimed that the General Court had infringed the principle of proportionality by declaring the marks invalid, and had failed to provide Red Bull with an opportunity to clarify the description of the marks so as to avoid such a declaration.

This ground was not fully considered by the CJEU, as it was found to constitute a new plea at law and was thus inadmissible.

5) The General Court had infringed their own Rules of Procedure by ordering Red Bull to pay the costs of the proceedings.

This ground was also deemed inadmissible on the basis that the first four grounds of appeal had already been rejected.

The overall appeal to the CJEU was therefore dismissed as both unfounded and inadmissible, with the result that both colour trademarks were declared to be invalid.

Comment

As illustrated by this case and the relatively small number of registered colour trademarks, it can be difficult to clear the various hurdles associated with successfully registering such a mark. It is necessary to represent the colour or combination of colours in a clear and precise manner, providing the specific colour code(s) or a sample as part of the trademark’s description. The use of vague terms such as “approximate” or “juxtaposed” should be avoided when describing the mark, as this will be interpreted as indicating a lack of precision in the graphical representation. When submitting evidence of acquired distinctiveness through use, it is also important to ensure that the reproduction of the colour marks in the evidence is consistent with the graphical representation that is intended to be registered.