On 29 July 2019 the Court of Justice of the European Union (CJEU) finally put an end to Red Bull’s five year battle to defend its EU registrations for the colours blue and silver. In its decision the CJEU confirmed Red Bull’s registrations are invalid. Unfortunately for Red Bull, further appeals are not possible.
The saga first began in 2002 when Red Bull filed EU Trade Mark No 002534774 (the “First Registration”) for a combination of blue and silver. The mark was depicted as follows:
Following an objection, Red Bull filed evidence of acquired distinctiveness in the mark as well as the following description:
‘Protection is claimed for the colours blue (RAL 5002) and silver (RAL 9006). The ratio of the colours is approximately 50%- 50%’
The First Registration was eventually entered onto the register in 2005.
In 2010, Red Bull filed EU Trade Mark No 009417668009417668009417668 (the “Second Registration”) for a combination of the colours blue and silver using the same graphic representation included in the First Registration. The application met with objection when the EU IPO indicated that Red Bull needed to specify in which proportion the two colours will be applied and how they will appear. Red Bull indicated that the two colours will be applied in equal proportion and juxtaposed to each other.
Optimum Mark (“Optimum”) challenged both the First and Second Registrations by filing applications for invalidity on two grounds. Firstly, Optimum claimed the mark did not meet the requirements of Article 7(1)(a) as the graphic representation did not systematically arrange the colours by associating them in a predetermined and uniformed way. Secondly, Optimum claimed the description allowed for numerous combinations which resulted in uncertainty.
In 2013, the Cancellation Division of the EU IPO declared both the First and Second Registrations invalid on the ground they were not sufficiently precise, relying on the fact both registrations allowed numerous different combinations which would not permit consumers to perceive and recall a particular colour combination to allow them to make future purchases with certainty.
Red Bull appealed the decisions but the Board of Appeal dismissed both appeals finding that the graphic representation of both marks, when viewed in conjunction with the relevant descriptions did not satisfy the requirements of precision and durability laid down in Heidelberger (Case C-49/02 and the leading authority on applications to register colour combinations as trade marks).
Red Bull then appealed to the General Court which also dismissed both appeals. Finally, Red Bull appealed to the CJEU.
The Appeal to the CJEU was based on five different grounds. The current analysis focuses on the second ground of appeal which consists of multiple parts and forms the bulk of the appeal. Red Bull claimed that the General Court incorrectly interpreted Heidelberger by holding that marks consisting of a combination of colours must systematically specify the spatial arrangement of those colours. It claimed that by considering the mere juxtaposition of colours to be insufficient to constitute a precise and uniform graphic representation, the General Court infringed the rule that a trade mark must be viewed as filed and thus failed to have regard to the specific feature of marks consisting of a combination of colours, which is not to have contours.
Red Bull also contested the General Court’s finding that marks consisting of combinations of colours must include a description. The description having always previously been left to the discretion of the Applicant. The CJEU failed to comment on this ground of appeal as both the First and Second Registrations included a description and to decide on this point would therefore have no bearing on the outcome of the proceedings.
Finally, Red Bull took issue with the fact the General Court took into account the actual use of the mark in order to establish that the graphic representation allowed for multiple arrangements. Red Bull claimed that this confused the analysis of the graphic representation of the mark with the analysis of the acquired distinctiveness. Red Bull highlighted that Article 7(3) and Article 15(1) both allowed for use of a mark in different variations, as such, marks consisting of colour combinations should not be reduced to a single figurative arrangement.
The CJEU dismissed the appeal on all grounds holding that the General Court did not err in law by finding that a registration which allows for a plurality of reproductions is incompatible with Article 4 of the Regulation. In particular, the CJEU made the following points:
The decision of the CJEU reaches the sensible conclusion that registrations for a combination of colours must be formed in such a way that a single and predetermined mark can be identified. Applications which make use of vague descriptions allowing for multiple combinations of the relevant colours, and therefore multiple marks, are unacceptable under the Regulation. The case serves as a reminder to Applicants that it is important to use precise descriptions which clearly identify a single mark for which protection is sought, particularly where such descriptions are used to support applications for colour combinations and other non-traditional marks where descriptions may be needed to clarify the mark applied for.