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23 November 2017Trademarks

Red Bull colour trademark clash: a preview

On November 30 the EU General Court will hand down its ruling in a trademark dispute involving energy drinks company Red Bull, with much at stake.

According to Bristows partner Jeremy Blum, the decision could determine the outcome of the registrability of colour trademarks in the EU.

“The approach of the Board of Appeal, whose decision is the subject of the appeal, makes it very difficult for trademark owners to register colour combination trademarks per se and also potentially makes existing trademark registrations for these types of colour trademarks vulnerable for invalidation,” he explained.

Aaron Wood, founder of Wood IP, added that the dispute reconsiders the points made in UK cases such as Cadbury v Nestle regarding the “ability of trademark owners to describe their trademark in ways which permit multiple permutations”.

In 2005 and 2011, Red Bull applied for trademark protection consisting of two blocks of colour—a blue rectangle next to a silver rectangle—to cover class 32 (energy drinks).

Red Bull was notified that it had failed to comply with the formal requirements of rule 9(3) of Regulation 2868/95 as it had not indicated the applied-for proportion of each colour and how the colours would appear.

The energy drinks company notified the examiner that the two colours would be applied in equal proportion and juxtaposed, and the mark was registered.

In 2011 and 2013, Poland-based Optimum Mark successfully applied for annulment of the mark.

Optimum Mark alleged that the “mere juxtaposition of two colours, without shape or contours, was not sufficiently precise in itself to satisfy the requirements” of article 4 of Regulation 207/2009.

According to Wood: “To date, the courts have suggested that where the legislation says that registration is for ‘a sign’, that rules out the possibility of words which allow for multiple possible combinations, such as the application in this case which described the ratio of the colours blue and silver as being ‘approximately 50%-50%’.”

He went on to say that, conversely, where the wording is “sufficiently precise that the combinations are very slight variants with no real difference”, the argument is that protection is being sought for only one sign.

The Cancellation Division of the European Union Intellectual Property Office (EUIPO) declared the mark invalid in October 2013.

Red Bull then filed a notice of appeal with the EUIPO, but in December the following year, the First Board of Appeal dismissed the appeal.

The Board of Appeal held that the Cancellation Division was right to declare the trademark was invalid, finding that the “sign’s description, merely indicating a proportion of those colours and the fact that those colours were juxtaposed to each other, could lead to numerous different combinations”.

The board added that the mark needed an “explicit description”.

Red Bull then brought an action in February 2015 for annulment of the decision, and Optimum Mark lodged its response.

Blum added that the appeal focuses on the “description given to a colour combination trademark application per se and how much weight is given to that description in order to interpret the scope of the trademark”.

Marques, the association of European trademark owners, applied for leave to intervene. It was granted by the General Court in November 2015.

Blum added that Red Bull “seems to be seeking what most other brand owners would be, which is a sensible and proportionate interpretation to the scope of colour combination trademarks per se”.

The General Court will hand down its decision on Thursday, November 30.

Blum concluded: “The General Court will be ruling if it agrees whether that type of approach for these trademarks is consistent with European law or if the law provides a more permissible approach for colour combination trademarks per se.”

Wood added that broader questions in such cases include whether trademark law should look purposefully at the meaning of ‘sign’ to allow an applicant to cover a very tight margin of difference.

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More on this story

Trademarks
30 November 2017   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.
Trademarks
1 December 2017   IP lawyers are largely disappointed with the EU General Court’s decision to reject Red Bull’s applications for its blue/silver combination mark, but they said there is still hope for brand owners.