Red Bull goes after grey market goods
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A trademark consisting of the mere juxtaposition of two colours, without a systematic arrangement, is not sufficiently precise and uniform to be valid, the EU General Court has ruled in a case concerning the Red Bull blue/silver mark.
The court gave its ruling today, November 30, in joined cases T-101/15 and T-102/15, Red Bull v EUIPO. The case involves two EU trademark (EUTM) applications for “energy drinks” in class 32.
The first application was filed in 2002 and included a description stating that “the ratio of the colours is approximately 50%-50%”. The second, filed in 2010, had a description saying “the two colours will be applied in equal proportion and juxtaposed to each other”.
After the European Union Intellectual Property Office (EUIPO) registered both marks on the basis of acquired distinctiveness, Polish company Optimum Mark challenged their validity.
In October 2013, the 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”.
That finding was upheld by the First Board of Appeal in December 2014. Red Bull filed an appeal at the General Court in April 2015, and a hearing was held on March 10, 2017. Marques intervened in support of Red Bull.
In its judgment, the court said that colours and colour combinations can be registered as trademarks under the regulation 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.
As stated in the Sieckmann case and subsequently, the graphical representation “must 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 Board of Appeal was right to find that the graphical representation of the Red Bull marks “allowed several different combinations of the two colours” and that 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 said this position is consistent with the Court of Justice of the European Union’s (CJEU) ruling in Heidelberger Bauchemie.
However, it did not say that a description of the systematic arrangement is always required for colour combination marks, only that it is required when that arrangement is not apparent from the graphical representation.
Red Bull had also challenged the Board of Appeal decision on the basis that there was a legitimate expectation that the mark would be valid based on the examiner’s acceptance of the application, and previous EUIPO practice.
But the court said the requirement of legal certainty outweighs any legitimate expectation of a private entity, and that applicants cannot rely on previous decisions to claim that a practice exists.
The court therefore dismissed the action and upheld the Board of Appeal decision. Red Bull can now appeal against the ruling to the CJEU.
The graphical representation requirement has been removed from the new EUTM regulation, which applies from October 1 this year.
Roland Mallinson, partner at Taylor Wessing and who represented Marques, said the association is disappointed by the decision.
“We had supported Red Bull’s case as we believed the original decisions wrongly set the bar too high for registering these types of marks once proven to be distinctive from extensive use.
“Today’s decision likewise makes it effectively impossible to protect the combination of two particular colours when, in practice, everyone knows how strong such marks can be at identifying trade source.”
He said he tried to reinforce that point in court by wearing the famous red and yellow colours of the Marylebone Cricket Club, based at Lord’s Cricket Ground in London.
“Illogically, it remains easier to secure a broad monopoly right for a single colour than it is for colour combinations. Marques is keen to see an interpretation of the law to allow such registrations, both in this case and under the new rules. The latter do away with the obligation to represent marks graphically and acknowledge the ‘what you see is what you get’ principle.”
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Red Bull goes after grey market goods