Coloured shapes and trade mark protection: the Orange case


It is relatively common that a trade mark attorney is confronted with the enquiry whether the colour per se and colour combination trade marks are registrable under the law of his or her jurisdiction. In Europe that is theoretically possible under the interpretation of the Court of Justice of the European Union, e.g. in the Libertel and Heidelberger Bauchemie cases. In particular, a colour per se is registrable whenever it is capable of distinguishing the goods or services of one undertaking from those of other undertakings, provided it can be represented graphically (generally a colour code system such as 'Pantone' is good for this purpose). It has been extensively debated whether, in colour per se trade marks, such distinctiveness is inherent or on the contrary they can only acquire it through use. In principle, this debate excluded shaped colour marks as these were not considered, strictly speaking, as colour per se marks.

Battles have been common in the field of colour trade marks. In Spain, (although also of relevance to other jurisdictions,) the last battle in this respect was that of Jazz Telecom v Orange Personal Communication Services, the Orange Case. It was about the attempt from the multinational telecommunications company known as 'Orange' to secure in Spain, the international trade mark registration no. 908,137 consisting of a plain orange square. It ran all the way to the Supreme Court before, finally being refused. The orange square mark was initially registered by the Spanish Patent and Trade Mark Office on account that the registration was not a mere colour per se mark, but a coloured shape and was therefore inherently distinctive (the case did not deal with distinctiveness acquired through use).
Orange competitor, Jazz Telecom, filed an administrative appeal in order to reverse this decision arguing lack of distinctiveness. The appeal succeeded before the Administrative Court. Orange therefore appealed to the Supreme Court, which confirmed refusal of the registration on 2 December 2013.

The Supreme Court considered that the strict interpretation for registering colour marks per se was applicable to marks consisting of a colour shaped by banal, trivial or elemental geometric figures, such as the orange square mark.

According to the Court, it was evident that the main element in a global assessment of the mark was the colour itself, as the square was a negligible feature. In the circumstances, that colour itself was not eligible for trade mark registration for the goods and services listed in the application. From this point of view, the shaped colour trade mark was no different from a colour per se trade mark. The Court also relied on the refusal by OHIM of an identical mark in 2006 (CTM 3,086,923) and considered its view was consistent with the case law of the General Court of the EU, citing T-282/09 Fédération internationale des logis / OHIM where the mark consisted of a basic square containing the colour green.