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Tuesday, 5 December 2017

The Red Bull colours: no trade mark registration for indeterminate colour combination

Trade mark enthusiasts will be certainly aware that a few days ago bad news reached Red Bull.
Katfriend Darren Meale (Simmons&Simmons) explains it all.
Here's what Darren writes:
"Red Bull, the energy drink brand phenomenon, comes in blue and silver cans. The colours are applied in a wrap-around of four quarters, top left and bottom right blue, silver on the opposing quarters, with a diagonal slant separating them: see a 3D representation here.
Joined Cases T-101/15 and T-102/15 Red Bull v EUIPO, a decision of the EU General Court, is not about the design of Red Bull cans. It is about two trade mark registrations for energy drinks for the colour combination blue and grey, as shown in the table below, with the marks’ descriptions as applied for.
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. Blue (Pantone 2747C), silver (Pantone 877C).

The General Court has held that neither of these registrations is valid. Distinctiveness was not the issue, because both passed examination having convinced the EUIPO that they had acquired distinctiveness in the EU (no mean feat in itself). They have now been held invalid because they do not fit the requirements of a trade mark.
The core of the reasoning is that “the mere indication of the ratio of the two colours blue and silver” which “allowed for the arrangement of those colours in numerous different combinations” did not “therefore constitute a systematic arrangement associating the colours in a predetermined and uniform way, producing a very different overall impression and preventing consumers from repeating with certainty a purchase experience.” The marks were not sufficiently precise.  
Once you strip out the technical language and the difficult to read style and prose adopted by the General Court, the decision is as much a policy one as anything: we do not want to grant trade mark monopolies of this type, they are too broad.
Here is a walk through some of the key points of the judgment:
·       Economic operators, along with authorities and the public, need to be able to understand the rights of third parties from inspecting the register. A sign has to be perceived “unambiguously, uniformly and durably”.
·       With this in mind, combinations of colours must be systematically arranged by associating the colours concerned in a predetermined and uniform way.
·       The mere juxtaposition of two colours (as in the above graphical representations) is not sufficiently precise, because such representations would allow numerous different combinations. So, something else is needed. But what?
·       In general, descriptions are not compulsory for EUTMs but if you put one in, it becomes an “integral part” of your registration along with the graphic representation. Red Bull’s descriptions referred to equality in proportions and one qualified that with the word “approximately”.
·       Colours must be “represented in accordance with a specific arrangement or layout associating the colours in a predetermined and uniform way, in order to prevent numerous different combinations of those colours which would not permit the consumer to perceive and recall a particular combination”. Red Bull’s descriptions did not do this.
·       “The arrangement of two colours may fail to be predetermined or uniform not only because of the different proportions of those colours but also because of the different spatial position of those colours in the same proportions.” The representation and/or description of the mark has to contain a “systematic special arrangement of the colours”.
What on Earth does that mean? You may need a physicist to draft your trade mark application, rather than a lawyer. Sadly, the judgment provides no useful guidance on what would satisfy these requirements, and we are left guessing.
There are not many two colour combinations on the EUTM register. At a quick count, there are about 90 registrations for either a single colour per se, or a combination of two colours. Below are a selection of examples of the descriptions provided of two colour combinations which have perhaps gone a little further towards spelling out a systematic special arrangement:
·       The combination of the colours yellow and grey, which are arranged in this order from top to bottom in an area ratio of approximately 50% each – here
·       The housing for the hair cutting machine is in two colours, the upper part of the housing is in dark red (Pantone 491C) and the lower part of the housing is in light grey (Pantone cool grey 4C). The ratio of the colours to one another is dark red (Pantone 491C) to light grey (Pantone cool grey 4C) = 43:57 – here
·       A combination of the colours blue "(Pantone 2925)" and black "(Pantone Black)" applied to the products in concentric circles with a black circle in the middle within a blue frame – here
·       The colour orange is applied to the top of the housing of the device and grey is applied to the bottom of the housing of the device – here
·       The visible parts of the vehicle, machine, equipment or apparatus bodies, superstructures and/or frames are wholly or mainly green; yellow graphic elements have been applied to the vehicle, machine, equipment or apparatus bodies, superstructures and/or frames, namely characters or stripes – here
·       The trade mark consists of the colours yellow (Pantone 116C) and red (Pantone 200C) applied to the external sides of the fuselage and rudder of an aeroplane. The external sides of the aeroplane fuselage and rudder are completely or mainly yellow, the lower part of the fuselage is completely red; the yellow part of the fuselage contains red symbols, markings and features, such as those found in the attachment; the yellow components outweigh the red components – here.  
Would any of these do the trick after this decision? Answers on a Red Bull-powered postcard (no stamp required).
There is a lot more to say about this case, but perhaps not room to say it in a blogpost. We haven’t even mentioned MARQUES valiant intervention, which sadly made no difference. There’s also more to say on Red Bull’s unsuccessful arguments on equal treatment, proportionality and legitimate expectations.
There’s also the General Court’s unexpected observation on the effect of the recent change to EU trade mark law which removed the requirement of graphical representation. This decision was based on the old law, but the General Court remarked (paragraph 117) that the removal of this requirement has the effect of providing for a more restrictive regime. A surprise – most of us were of the view that the new wording on trade mark eligibility had been intended to liberalise EU trade mark law.
Final thought, to refer to an observation from another commentator about this decision: is it now harder to obtain a registration for two colours than for one?” 


Aaron Wood said...

Frankly I think it surprising that this is surprising. The case law as long ago as Sieckmann put a big fat nail in these cases. I remember as long ago as 2003 looking at the issue to deal with counterfeits and lookalikes and concluding that a description which passed Sieckmann and which covered what was required (ie was sufficiently vague that similar products would be caught as identical products) was impossible.

That the UK pins it on them not being "A" sign and the General Court on the lack of clarity and precision is of little import.

I'm afraid the answer is clear - register a depiction and argue similarity. It is no different from the issue in designs where the courts have wrestled with the over-reaching from some claimants in relation to unregistered designs.

The first one was never going to be valid post CADBURY PURPLE.

If you look at the second RED BULL depiction then it seems at first blush to be acceptable... until you realise that the description would cover a tin where there are 10 bands of colour, some blue some silver, and the combined coverage is equal and the colours are juxtaposed.

Of course, you might also question whether the evidence of acquired distinctiveness goes that far...

Sorry but to say that this is about not wanting to grant "this type of monopoly" is only correct in that they are not allowing UNCLEAR monopolies. As someone who actually has to clear marks I welcome this.

As for whether it is easier to register a single colour rather than 2.. it depends. If it is (for example) one colour as applied to the entire surface area of the packaging of a product.. maybe. But that is subject to a whole manner of issues on acquired distinctiveness. If the monopoly sought is clear but broad then it should pass the Sieckmann test, but the evidence should need to be compelling that the monopoly is warranted in light of the evidence.

Michael Chester said...

The marks as written would cover polka dots, and a blue silhouette of a Kat against a silver background (if they were the right size, of course). What they would not appear to cover includes the Red Bull cans (which, when considered as a whole, have much more silver than blue, and when considered from a front view have more blue than silver), or the containers used for four packs (which have more blue than silver).

Wrong Bull said...

This appears to be a completely correct decision from the General Court. The registrations from Red Bull are obviously far too vague and imprecise to be registered. Simply by way of example, a blue drinks that is made blue by printing microscopic dots of blue on the silver surface of the can could fall within the literal scope of either application and could therefore be an identical sign. This means that said blue can would infringe even if the consumer was not at all confused.

Unfortunately, complaining that it is difficult to properly define the trade mark you are applying for ("you may need a physicist to draft your trade mark application, rather than a lawyer") is nowhere near a valid justification for granting unclear and overly broad monopolies. More guidance of how to draft applications, would be welcome but even as it stands it doesn't even seem overly burdensome to draft a reasonable trade mark application. All of the currently registered examples cited in this article are defined significantly more precisely than Red Bull's trade mark registrations.

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