ECJ AFFIRMS LIBERTEL PRINCIPLES IN HEIDELBERGER COLOUR COMBINATION CASE

On Friday 25 June this blog mentioned Case C-49/02 Heidelberger Bauchemie, the latest European Court of Justice ruling on the registration of colours as trade marks. Unlike the earlier ruling in Case C-104/01 Libertel, which dealt with the registrability of a single colour undelineated by shape, Heidelberger Bauchemie concerned a two-colour combination which was equally undelineated. The ECJ affirmed its earlier ruling and stated, in short, that colours were capable of being registered as trade marks either on their own or in combination with each other so long as (i) they constitute a sign and (ii) there is some systematic arrangement for using them in a uniform way. If this were not the case, registration of Heidelberger's undelineated blue-and-yellow livery as a trade mark could give protection against the use of both blue and yellow by themselves.

The active part of the ECJ's ruling reads as follows:

"Colours or combinations of colours which are the subject of an application for registration as a trade mark, claimed in the abstract, without contours, and in shades which are named in words by reference to a colour sample and specified according to an internationally recognised colour classification system may constitute a trade mark for the purposes of Article 2 of Council Directive 89/104 where:
―it has been established that, in the context in which they are used, those colours or combinations of colours in fact represent a sign and
―the application for registration includes a systematic arrangement associating the colours concerned in a predetermined and uniform way.
Even if a combination of colours satisfies the requirements for constituting a trade mark for the purposes of Article 2 of the Directive, it is still necessary for the competent authority for registering trade marks to decide whether the combination claimed fulfils the other requirements laid down, particularly in Article 3 of the Directive, for registration as a trade mark in relation to the goods or services of the undertaking which has applied for its registration. Such an examination must take account of all the relevant circumstances of the case, including any use which has been made of the sign in respect of which trade mark registration is sought. That examination must also take account of the public interest in not unduly restricting the availability of colours for other traders who market goods or services of the same type as those in respect of which registration is sought".

The IPKat thinks the court has got it right. He notes that the applicant for registration sought to support his case by citing Article 15(1) of TRIPs, which specifically mentions colour combinations as falling within the scope of a potentially registrable sign. The ECJ did not address this issue in detail, largely because it did not need to.

Blue and yellow here, here , here and here
Not to be confused with yellow and blue here, here and here