The EU General Court has decided that Red Bull's well-known blue/grey colour combination is insufficiently precise to be validly registered as a trade mark. Whilst Red Bull may appeal to the European Court of Justice, the decision is a blow for brand owners, with Marques (the brand owners' association) having made representations to the General Court that the test for registrability of two-colour marks has been set too high. In particular, the effect of the decision seems to be that colour marks comprising colour combinations are harder to register than those of single colours.
The energy drink manufacturer was appealing against successful invalidity actions against the below representation, which had been registered twice with different descriptions:
- 'Protection is claimed for the colours blue (RAL 5002) and silver (RAL 9006). The ratio of the colours is approximately 50%-50%'.
- 'The two colours will be applied in equal proportion and juxtaposed to each other' (this wording was adopted following correspondence with the examiner).
The General Court highlighted that, to be registrable, a trade mark must be a sign, capable of being represented graphically, and capable of distinguishing the goods and services of one undertaking from those of another. Although the graphical representation requirement has now been removed for new applications, a sign under the new regime must still be capable of being represented 'in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection'. Further, the new regime implements case law of the European Court of Justice which requires that the reproduction of the colour combination shows the systematic arrangement of the colour combination in a predetermined and uniform way. In addition, there must be an indication of the colours by reference to a generally recognised colour code, e.g., Pantone.
The General Court applied this CJEU case law and decided that the combination of the representation with either description did not enable the sign to be precisely identified, which affected both the requirement of precise graphical representation and the requirement that a mark be capable of fulfilling the origin function. Each description enabled some degree of ambiguity; the Court decided that the mere juxtaposition of colours, without shape or contour, did not exhibit precision and uniformity. Customers would be unable to use the mark as a badge of origin, and competitors would lack legal certainty as to the scope of protection provided by it.
The decision highlights a clear and ongoing tension in the EU trade mark regime: whilst the Regulation explicitly states that an EU trade mark may consist of colours, registration is difficult to obtain due to the criteria that a valid trade mark must be clear, precise, self-contained, easily accessible, intelligible, durable and objective. Regrettably, there is no clear guidance from the Court as to what would be acceptable to provide the necessary clarity and precision.
Red Bull also argued that, by accepting its applications initially and by suggesting a description, a legitimate expectation of the validity of its marks had been created. However, the Court decided that the need for certainty superseded such an expectation.
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