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Red Bull and the challenges of registering a colour trademark

11-12-2017

Two European trademarks protecting the combination of blue and silver colours used by the energy drink supplier were held to be invalid by the EU’s General Court on the grounds that they did not meet the requirements of a trademark. Although the EUTMs – the first registered in 2002; the second in 2010 – were found to have met the tests of acquired distinctiveness, they were not displayed with sufficient precision in the applications to warrant trademark protection, according to the Court.

Red Bull’s 2002 mark was registered for the colour combination blue and silver for class 32 ('Energy drinks'). The description in the graphic representation in the application describes the ratio of the colors as ‘approximately’ 50-50. In 2010, a second EU trade mark application was submitted, which concerned the same graphic representation, but with a different description, namely that the two colours will be 'applied in equal proportions and juxtaposed to each other’.

Initially, the applications were approved by the EU Intellectual Property Office (EUIPO) on the basis that the signs had acquired distinctive character through long-term and intensive use. However, Polish company Optimum Mark filed an application for a declaration of invalidity against both marks in 2013. EUIPO’s Cancellation Division and later Board of Appeal agreed with the declaration, leading Red Bull to appeal to the EU’s General Court.

The test for trademark registration
On appeal, the EU’s General Court confirmed the registrations to be invalid, on the basis that neither mark met the requirements of what constitutes a trademark. In particular, the ruling states that signs consisting of a combination of two or more colours must contain “a systematic arrangement associating the colours in a predetermined and uniform way”.

Further, a trademark application which merely consists of a juxtaposition of two or more colours, or just mentioning the colours on the application as being ‘in all conceivable forms’ does not meet the requirements of accuracy and durability, and therefore cannot function as a colour mark.

This is because the descriptions as submitted by Red Bull implies too many possible colour combinations, allowing them to arranged in multiple ways which would produce a very different overall impression. In other words, the contested marks as registered were not sufficiently precise.

What does the ruling mean for brand owners?
As we have written previously, it can be difficult for companies to assert their rights to use a particular colour or colour combination. The reality is that, as popular as colour-related trademark applications are among brand owners, many trademark offices seem reluctant to accept such registrations on the grounds that they offer too broad a protection to brand owners (e.g. a monopoly to a colour).

This latest ruling does, however, provide some insight into the strict requirements for protection that need to be met; in particular in terms of the ‘systematic’, ‘predetermined’ and ‘uniform’ wording that needs to be used in the description of any future trademark application. Unfortunately, it does not offer any exact guidance on how to meet those requirements. It will be interesting to see whether Red Bull now appeals to the Court of Justice of the EU (CJEU), which could lead to further clarity in this matter.

Please get in touch with your Novagraaf attorney or contact us for further assistance in protecting colours or colour combinations as trademarks.

Ghislaine van Lieshout works in Novagraaf’s Competence Centre. She is based in Amsterdam