27 March 2019Trademarks

CJEU clears up colour TM questions for Finnish court

The Court of Justice of the European Union (CJEU) has today, March 27, answered a Finnish court’s questions on colour trademarks.

In 2012, Helsinki-based beverage company Hartwall applied to register a sign, in the shape of a banner, as a colour mark covering mineral water. The sign was described as: “The colours of the sign are blue (PMS 2748, PMS CYAN) and gray (PMS 877).”

Following a preparatory decision by the Finnish Patent and Registration Office, Hartwall stated that it wanted to register the mark as a colour mark, and not as a figurative mark.

In June 2013, the IP office rejected the application for lack of distinctive character, finding that an exclusive right can’t be conferred for the registration of specific colours unless it has been established that the colours have acquired distinctiveness because of sustainable and significant use.

The office also found that Hartwall’s market investigation revealed that the reputation of the mark at issue was established only with respect to the figurative sign, whose contours were defined and determined, and not with respect to the colours.

Hartwall appealed against the decision to the Market Court of Finland, but the appeal was rejected.

Again, Hartwall appealed, this time to the Supreme Administrative Court of Finland. This time, the court decided to stay proceedings and refer questions to the CJEU.

In its referral, the Finnish court asked how to interpret the requirement of graphic representation and the requirement of distinctiveness when registering a colour mark.

The court also asked whether the Trade Marks Directive precludes the registration of a colour mark which has been graphically represented in the form of a figure.

Answering the first question, the CJEU held the qualification of a trademark as a colour mark or figurative mark is relevant in determining whether the sign is capable of constituting a mark and whether the mark has distinctive character.

However, the court added that this doesn’t relieve the relevant authority from its obligation to carry out a comprehensive assessment of the distinctive character of the mark, which implies that the authority may not refuse the registration on the sole ground that the sign has not acquired distinctive character in relation to the claimed goods or services.

The directive must be “interpreted as precluding, in circumstances such as those at issue in the main proceedings, the registration of a sign as a mark of the fact the existence of a contradiction in the application for registration”, said the CJEU, adding that this was for the national court to verify.

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