Color Clarity in Court
Clarity needs to be given to the color trademarks regime in Europe. So said Jennifer Powers, IP Counsel at Red Bull GmbH (Austria), when moderating the panel discussion in Session CM21: The Fate of Color Per Se Marks in Europe yesterday.
In November 2017, the European Union’s General Court concurred with the European Union Intellectual Property Office’s (EUIPO’s) decision that Red Bull GmbH’s two European Union Trade marks (EUTM) for the brand’s blue and silver color combination were invalid because of overly-broad representations and descriptions.
Practitioners in the trademark sphere have kept a close eye on the Red Bull GmbH color trademark dispute, which is currently on appeal to the Court of Justice of the European Union (CJEU). Ms. Powers said the CJEU’s ruling, which “we’re all very curious about,” is expected in Spring 2019.
“Hopefully there will be clarification as to whether our mark is valid or not—and I hope it is,” Ms. Powers said.
Andreas Renck, Managing Partner at Hogan Lovells (Alicante) SL y Cia. (Spain) explained that the impact of the Red Bull GmbH decision could have wide-ranging implications for owners of non-traditional trademarks, as well as for the EUIPO.
As the registration of concrete and abstract color marks has historically been permitted by the EUIPO, the reasoning behind the Red Bull GbmH decision could be used to invalidate more than 85 percent of all registered EUTMs for color combination marks (without any contours) if the General Court’s ruling is affirmed, Mr. Renck said.
Though the General Court determined that Red Bull fell short of indicating the level of precision necessary when registering particular colors for specific uses, it did not provide guidance on what would have been sufficient.
Fidelma Macken, former judge at the CJEU and retired judge at the Supreme Court of Ireland (Ireland), said the court does not determine what level of precision will suffice, as “that’s a question for the national court, or national trademark office, or for the EUIPO.”
Carl Myers, Senior IP Counsel at Stanley Black & Decker MEA (United Arab Emirates), said “we’re in a bit of a ‘wait and see’ moment” in relation to color marks in Europe.”
He explained that in the early to mid-1990s, when “color marks became more popular,” Stanley Black & Decker MEA made “huge efforts” to register and protect its signature black and yellow colors in the United States.
Mr. Myers said the understanding was that companies should “replicate the same in Europe,” but, as the company quickly discovered “it doesn’t quite work like that” in Europe.
Dimitris Botis, Deputy Director Legal Affairs at the EUIPO (Spain), made note of the additional rules governing the registration of non-traditional trademarks in the EU (Article 3 of EU Commission Implementing Regulation 2017/1431).
Mr. Botis explained that under the new regulation it is no longer mandatory to include a description of the trademark when filing it at the EUIPO, although if an accompanying description is provided it will not be permitted for it to extend the scope of the mark.
If the description appears to extend the scope of the mark the trademark application will be rejected. In Mr. Botis’ opinion, “filing a description is dangerous” as it merely adds to the risk that the application will be rejected.
The other speaker on the panel was Roland Mallinson, Partner at Taylor Wessing (UK).
Mr. Mallinson noted that while color marks are “no different” from other marks in legal status, in practice “the courts do have some difficulties” navigating the realm of non-traditional trademarks.
