How to approach colour marks after the Red Bull ruling

Business entities are particularly careful about the promotion of their brands, which includes the creation of marks with extensive colour layers and their protection, thereby strengthening their market position.

The reality is that a well-chosen colour combination in an individual distinctive sign, ie, a trademark, plays a significant role in acquiring customers. Despite the distinctiveness attributed to specific words or fanciful and catchy slogans, a well-thought-out colour layer of a mark can significantly distinguish goods in the course of trade.

Red Bull judgment

In 2005 the European Union Intellectual Property Office (EUIPO) registered the combination of colours blue and silver for Red Bull as an EU trademark (EUTM) no. 2534774 for energy drinks in class 32 of the Nice Classification (pictured). The mark description was as follows: “Protection is claimed for the colours blue (RAL 5002) and silver (RAL 9006). The ratio of the colours is approximately 50:50.”

Polish company Optimum Mark, in the course of managing the portfolio of food distributor and retailer Jerónimo Martins’ brands, later filed a cancellation action claiming that the mark in question had not been properly (graphically) represented and described, as the representation does not satisfy the conditions laid down in case law. According to the law, a graphic representation must be clear, precise, self-contained, easily accessible, intelligible, durable and objective, and must be systematically arranged by associating the colours in a predetermined and uniform way.

After a long battle, the General Court issued a judgment on November 30, 2017 in joined cases T-101/15 and T-102/15 that said Red Bull’s marks should not be registered. The General Court pointed that the arrangement of two colours may fail to be predetermined or uniform not only because of the different proportions of those colours but also because of the different spatial position of those colours in the same proportions.

In the case of a combination of colours, the only way in which the colours can be positioned within a contour-free space is by being juxtaposed in various arrangements. The only details that can be given are the specific shades of the colours concerned and the proportions in which each of them is displayed.

Such a representation results in the subject of protection afforded by the trademark being too broad, which is hard to reconcile with the requirement of the colours’ availability and which must, therefore, be clarified as soon as the application for registration is filed with respect to the systematic arrangement associating the colours in a predetermined and uniform way.

Keeping that in mind, it is worth discussing the principles of registering marks comprising colours.

Combination of colours

A combination of colours is a combination of two or more shapeless colours without a specific shape or arrangement. Colour per se is shapeless and thus independent of the specific form of its location on the object with unspecified contours.

In relation to a trademark in the form of an abstract colour, the subject of consideration is only the colour as such, without any reference to a specific shape. The feature of colour per se is the objective and contour indeterminacy of possible forms of its application. Naturally, the very essence of a trademark in the form of a colour indicates that it must be perceived visually, and thus in a specific case of its use takes certain shapes, contours, and is applied to specific objects.

This fact, however, does not change the general idea that the sign is subject to abstract protection. In its essence, it is devoid of references to specific objects and can take any shape in its practical application and appear in any form.

Theories

In the international literature on the subject, theories are put forward according to which the possibility of protecting colours as trademarks is undermined. These are (i) exhaustion theory; (ii) confusion theory; and (iii) functional theory.

According to the exhaustion theory, the number of colours the human eye can recognise is small and, in fact, limited. Registering individual colours to specific entrepreneurs can therefore lead to quick depletion of unregistered colours. Consequently, there are demands that such signs should not be appropriated and that they should be kept in the public domain—with free access to all entrepreneurs.

According to the theory of confusion, which is related to the theory of exhaustion, the perception of colours is limited when comparing many shades of colour. Registering one hue of a given colour for one entity makes it impossible to obtain protection for similar shades for other market participants, due to the possible risk of confusion.

Functional theory applies to colours based on the adopted symbolism of colours. Some colours may have a warning function (eg, red or orange), while others transmit certain properties of goods (eg, green for organic products), or are the right colour for a given product (eg, brown for chocolate). However, this does not apply to all colours, and colour cannot play a functional role with regard to all goods or services.

Distinctiveness

Only an extraordinary and characteristic colour may in certain circumstances meet the conditions for obtaining a registration as an EUTM. For this reason, a single colour that can be considered popular in a given market segment will not receive the protection provided for the trademark due to the lack of sufficient distinctiveness.