The European Court of Justice has given judgment in case concerning an application to register a combination of colours as a trade mark. While the ECJ has ruled that a combination of colours can be registered as a trade mark it is likely that this will only be possible in circumstances where the mark has acquired distinctiveness through use.
Heidelberger Bauchemie GmbH(Case C-49/02)
In 1995 the applicant, Heidelberger Bauchemie GmbH, applied to the German Patent Office to register a trade mark in respect of various products for use within the building industry. The mark in question was a combination of the colours blue and yellow. The application included a rectangular piece of paper with the upper half blue and the lower half yellow. The description stated that the trade mark which the applicant sought to register consisted of its corporate colours as used in ‘every conceivable form, in particular on packaging and labels’. The application also provided a specification for the colours. The German Patent Office initially rejected the application because it was not capable of constituting a trade mark and was not capable being represented graphically. The mark was also held to be devoid of any distinctive character.
Following a decision of the German courts in another case, the Patent Office decided to review Heidelberger’s application. Although the Patent Office did accept that the combination of colours could constitute a trade mark, the application was rejected because the mark lacked distinctive character. Heidelberger appealed this decision to the German Federal Patents Court. The national court decided to stay proceedings and make a referral to the ECJ.
In essence the question referred the to ECJ was whether for the purposes of Article 2 of the Trade Mark Directive (89/104/EEC) colours or combinations of colours ‘claimed in the abstract, without contours’ could be registered as a trade mark? The ECJ stated that an application which consisted of a combination of colours would have to satisfy the three conditions set out in Article 2. Firstly the combination of colours must be a ‘sign’. Secondly that sign must be capable of being represented graphically and thirdly that sign must be capable of distinguishing the goods or services of one undertaking from those of other undertakings. The ECJ considered each of these conditions.
1. Can colours or combinations of colours constitute a sign? The court made reference to its judgment in Libertel Groep BV v Benelux Markenbureau (Case C-104/01) and noted that colour is ‘a simple property of things’ meaning that things are coloured for decorative or other purposes without necessarily denoting any trade mark relevance. However the court held that colours or their combinations may be capable of being a sign for the purposes of Article 2 when used in relation to goods and services.
2. Is an abstract colour or combination of colours capable of graphic representation? The court drew attention to its case law on the graphic representation of a mark (see Libertel and Sieckmann (C-273/00)). The graphic representation of the mark must be ‘precise and durable’ and the mark must be ‘perceived unambiguously and uniformly’ in order for it to fulfil its role as a registered trade mark and thus guarantee the origin of the goods and services. Where there is a combination of colours the court held that the combination must be ‘systematically arranged’. Where the applicant seeks to register a combination of colours in ‘every conceivable form’ (as in the Heidelberger application) this will not satisfy the requirement of graphic representation contained in Article 2.
3. Are colours or combinations of colours capable of distinguishing goods or services? Again drawing on its judgment in Libertel the court noted that the key issue was whether colours or combinations of colours can convey ‘precise information’ and in particular with regard to the origin of the goods or services. Following Libertel it is clear that colours possess little inherent capacity for communicating specific information. For this reason abstract colours, apart from exceptional circumstances, can have no distinctive character without having been used in relation to the relevant goods or services. The ECJ concluded therefore that colours or a combination of colours may be capable of distinguishing goods or services following the relevant use of that colour or combination.
Having considered the requirements of Article 2 the court also held that a trade mark registration authority must also determine whether the application to register a colour or a combination of colours meets the other requirements set out in the Directive, and in particular the requirements of Article 3 (Grounds for refusal or invalidity). The examination of the application should take account of all the relevant circumstances of the application including use of the sign and the public interest in not restricting the use of the relevant colours.
The ECJ’s judgment in Heidelberger comes in the wake of its judgment in the Libertel case and it is not surprising that the ECJ has drawn heavily on its reasoning in Libertel. In Libertel the ECJ held that a single colour could be registered as a trade mark but, apart from exceptional cases, only where the mark had acquired distinctiveness through use. Heidelberger now extends much of the same reasoning to combinations of colours which were generally thought to be easier to register than single colours. This means that registering combinations of colours without evidence of acquired distinctiveness will be very difficult.
Heidelberger therefore raises two main issues for an applicant seeking to register a combination of colours. Firstly there is the issue of graphic representation. Precise and durable graphic representation of a trade mark is essential for the operation of a trade mark system as it provides, as far as possible, certainty for the relevant trade mark authority, other economic operators and also consumers of the relevant goods or services. The ECJ has again affirmed the general requirement that the graphic representation of a mark be precise, unambiguous, objective and durable. The ECJ has been clear about this requirement generally in Sieckmann (a case which concerned the registration of an olfactory mark) and more specifically with regard to colours in Libertel.In Libertel it was held that the requirement for graphic representation would be met by designating the relevant colour using an internationally recognised colour identification system. A sample of the colour on paper will therefore not be sufficient. Where there is also a combination of colours, as in Heidelberger, the ECJ has ruled that the combination must be represented in systematic way. However it remains to be seen how the trade mark authorities and the national courts will apply this particular requirement.
Secondly there is the issue of distinctiveness. On the one hand the ECJ has held that colours or combinations of colours per se can be registered. However, on the other hand, it is unlikely that a colour or a combination of colours will have the necessary distinctive character without prior use in relation to goods or services. It appears therefore that the circumstances in which it will be possible to register colours or their combinations on the basis of inherent distinctiveness will be extremely limited. This reasoning fits with the ECJ’s continuing focus on the doctrine of the “need to keep free” which it applies in relation to geographical terms, shapes and now colours.
In conclusion the registration of a combination of colours without further design elements will usually be limited to circumstances where that combination has acquired distinctiveness through use. The ECJ has therefore set a relatively high threshold for registration. Further, and in accordance with the Libertel guidance, it will be necessary for an application to provide a designation (using a recognised colour system) for each of the colours and also to set out the arrangement of the colour combination.
Due to be published in the August 2004 issue of WIPR.