Decisions regarding the registrability of colours as trade marks have been delivered recently by the respective supreme courts of Belgium and the Netherlands. Both decisions purportedly interpret the uniform Benelux Trade Mark Law, which applies in both countries as well as in Luxembourg.

The potential clash arises because decisions of the Benelux Trade Mark Office ('BTO' ), such as refusals to register, can be appealed to respectively the Court of Appeal of Brussels, the Court of Appeal of the Hague or the Court of Appeal of Luxembourg, and thence reviewed by the respective Supreme Courts of the three Benelux countries. Each of those courts can, but is not obliged to, put preliminary questions to the Benelux Court of Justice on matters of interpretation of the Benelux Trade Mark Law. Besides, all three countries are now also bound by the Trade Mark Harmonisation Directive (89/104/EEC: "the Directive").

Unfortunately, it appears that the Belgian and Dutch Supreme courts are now in disagreement about the conditions for registrability of a colour trade mark in the Benelux system.

The Belgian Supreme Court decided that colours are not precluded by law from having distinctive character and can thus be registered as trade marks. It also decided that the general interest in keeping colours free from trade mark registration does not apply. It further agreed that the assessment as to whether a colour has in fact got a distinctive character must be made taking into account all the circumstances.

The Dutch Supreme Court preferred to ask the Court of Justice of the European Communities ('ECJ' ) its opinion about these questions. An ECJ preliminary ruling is thus expected on these questions in due course.

1. Belgian Cour de cassation: BTO v. Belgacom

Belgacom (the former Belgian telecommunications monopoly) sought to register the colour turquoise for its goods/services. The BTO refused the registration. Belgacom challenged the refusal and, by a judgment of 28th September 1999, the Brussels Court of Appeal overturned the refusal on the basis the colour turquoise is capable of fulfilling the function of a mark since it is sufficient to have distinctive character, and no other conditions are required (see Benelux Court of Justice, 16th December 1991, Burberrys/Bossi). The BTO had not given valid grounds to refuse the registration. Accordingly, the Court of Appeal decided the mark could be registered. TheBTO applied to the Cour de cassation, Belgium's Supreme Court, to annul the Court of Appeal s decision.

Decision of the Cour de cassation

The Cour de cassation rejected all the grounds invoked by the BTO to annul the Appeal decision. It held that the Court of Appeal rightly decided that, taking into account all the circumstances of the case, the colour turquoise is distinctive for Belgacom s products and services, and consequently there can be no confusion. This confirms that a colour can be registered if distinctive.

The argument that there is a general interest in keeping colours free from trade mark registration is alien to the question of whether a sign can have sufficient distinctive character as decided by the ECJ in Windsurfing Chiemsee in May 1999.

The Cour de cassation concluded there was no need to put questions to either the ECJ (over the interpretation of the Directive) or the Benelux Court of Justice (over the interpretation of the Benelux Trade Mark Law).

The claimants action for annulment of the Court of Appeal's decision was thus rejected.

2. Dutch Hoge Raad: Libertel v. BTO

In 1996, Libertel applied for a trade mark for the sign 'orange' in relation to telecommunications products and services (classes 9, 35, 36, 37, 38). The BTO refused the application in 1997 on the ground that the sign cannot have distinctive character only on the basis of the colour 'orange', as stated in art. 6 bis, par. 1, a, Benelux Law, unless distinctiveness can be acquired by use. The BTO also dismissed Libertel's appeal on acquired distinctiveness of the mark, giving no new grounds for its refusal. Libertel then appealed to the Court of Appeal of the Hague to annul the refusal of the BTO. The court rejected Libertel's appeal on the basis that the mark lacked distinctive character. It is this decision which was challenged in front of the Hoge Raad.

In a previous case, the Benelux Court of Justice had decided that, under art. 6 bis, par. 1 of the Benelux Trade Mark Law, the BTO and the judge should not base their decision solely on the sign which is registered and the goods for which it is registered, but must take into account all the relevant facts and circumstances. Under art. 6 ter Benelux Trade Mark Law, the judge can only take into account the use of the registered sign up to the moment of the application to register.

Decision of the Hoge Raad

A trade mark that has acquired a distinctive character only through use cannot be registered when this acquisition of distinctiveness has only happened after the application. The Hoge Raad did not see any reason to ask a preliminary question in this regard to the ECJ.

However, a question was also raised as to whether in judging the distinctive character of a mark consisting of a specific colour, stricter criteria should be applied, in particular if the application is made not for a specific good or group of goods, but for a great range of goods or services.

In a 1997 case, the Benelux Court of Justice had already decided the question whether and under which circumstances a single colour can have distinctive character as a mark. But as this case was decided before the adoption of the Directive, the Court did not take the Directive into account in its decision. The Hoge Raad therefore concluded that for this reason at least it was necessary to refer a preliminary question to the ECJ.

The Hoge Raad saw also two additional reasons to ask the ECJ for preliminary rulings. The first question regards the frequency of use of the colour orange in connection with services which are related to the goods and services for which Libertel wished the colour to be registered. The second question concerns the existence of trade mark registrations of different hues of the colour orange by third parties for a great range of products, packing materials and services.

For the Hoge Raad, the question of whether the registered sign has acquired distinctive character at the time of the application did not need to be discussed before the preliminary questions were answered.

The Hoge Raad therefore referred the following questions to the ECJ and suspended the proceedings until the ECJ issues a ruling:

1. Can a single specific colour which is so depicted or is indicated with an international code have distinctive character for certain goods or services in the sense of art. 3 of the Directive?

2. If so,

a. Under what circumstances can a single specific colour acquire distinctive character in this sense?

b. Does it make a difference if the registration is sought for a wide range of goods or services, or for a specific good or a service, or a distinctive group of goods or services?

3. In deciding whether a certain colour has distinctive character as a mark, should it be checked whether there is a general interest in keeping it free, as for signs which indicate geographic origin?

4. Should the BTO, in deciding whether a sign registered as a trade mark has distinctive character under art. (3) (1) (b) of the Directive, limit itself to a decision in the abstract as to the distinctive character or does it have to take into account the use made of the sign and the manner in which the sign is used?

It is striking that the Hoge Raad has not requested a preliminary ruling from the Benelux Court of Justice, but from the ECJ. This may indicate that the Dutch court wanted to bypass a judicial body where the Belgian point of view was perceived as too dominant and not in line with the Directive. Alternatively it may be because national courts must construe Benelux law in accordance with the Trade Mark Harmonisation Directive. Or perhaps the Hoge Raad has been more reticent because the colour chosen was orange, which is the national colour of the Netherlands?

Whatever the reason, the answer now lies in the hands of the ECJ. It remains to be seen whether or not it will follow the Belgian Cour de cassation findings.

The ECJ will construe the questions referred to it only having regard to the Directive, because it does not have jurisdiction over Benelux Law itself. In light of this, one can finally wonder whether this difference of opinion between the two Supreme courts, which lead the Dutch court to make a reference to the ECJ, is to be interpreted as the beginning of the end of Benelux Trade Mark Law as we know it.

First published in WIPR in May 2001.