Colour trade marks and secondary meaning: the Spanish version

After the Arnoldian reference to the Court of Justice of the European Union (CJEU) regarding the 3-D shape of a Kit Kat, here’s another story on tricky unconventional signs, namely colour trade marks. This time the IPKat takes a trip down to Spain, where the Supreme Court provided some guidelines in its decision of 2 December 2013, recently published.

In 2006, Orange Brand Services Ltd, the British little sister of the French company Orange S.A. [some previous Kat-episodes of the Orange saga here, here and here] filed the international registration (IR) No. 908,137 for a wide number of services of classes 9, 38 and 42. The application reads “Orange. The trademark is composed of a square coloured orange (pantone 151)” and covers the sign on the right.

This IR designated Spain. Once it reached the Spanish Trade Mark Office, the application received a not really warming welcome from Jazz Telecom S.A.U., another telco with a very orange brand image [although those two oranges were slightly different, Merpel notes: the Orange’s orange looks much more orange than the Jazz's other orange], which brought opposition alleging lack of distinctive character. 

The Spanish PTO dismissed Jazztel’s opposition, arguing that the application did not cover a colour as such but a coloured square, which was no reason for excluding that sign from trade mark protection (decision of 15 October 2008). Jazztel appealed the PTO’s decision before the Administrative Court of Madrid, which took a different view and declared the Orange’s trade mark null because, square or not, the orange colour failed to play a distinctive role in the telecommunication field (decision of 14 June 2012). Consequently, Orange brought the issue to the attention of the Supreme Court, also complaining that the Madrid Court “denaturalised” the nature of its trade mark, wrongly assuming it to be a colour trade mark instead of a device sign constituted of an orange-coloured square.

Jazz music to Jazztel's ears, the Supreme Court upheld the Madrid Court’s decision, possibly putting the nail in the coffin of Orange’s (squared) colour monopoly dream in Spain.

Also recalling previous Spanish and EU case-law (among other things, the CJEU decisions in Case 104/01,  Libertel and  in Case C-49/02, Bauchemie), the Supreme Court stated that colours generally lack of distinctive character and cannot play a proper distinctive role, as consumers are used to perceiving them as a decorative element rather than as trade marks. Further, it continued, unduly restricting the range of colours that competitors may use in a certain commercial field goes against the common interest (“general interest”, the Spanish Court said, with the words of CJEU in Libertel). 

For these reasons, the Court concluded, registration of colour trade marks should be limited to those “extraordinary circumstances” in which a certain colour acquired distinctive character as a consequence of its use and only insofar as the application is referred to a specific and limited number of products or services.

As to the combination between colour and shapes, the Court mentioned another similar case decided by the EU General Court with reference to the green square illustrated on the right (decision in Case T‑282/09, Fédération internationale des logis v. OHIM):

It's Jazz, I'm orange:
so what?

In that regard, the General Court concluded that a green square is not inherently distinctive because “a sign bearing an excessive simplicity and constituted of a basic geometric shape such a circle, a line, a rectangle or a regular pentagon is not eligible as such to transmit a distinctive message that consumers may recall, so that the latter could not consider it as a trade mark unless it has acquired secondary meaning“. In the same perspective, the Spanish Supreme Court found the potential scope of protection of Orange's IR not to be so different to that of a colour trade mark, as the combination between a “trivial, banal and elementary geometric shape” with a colour leads the colour to play a dominant role over the shape, bringing the public to focus on the colour instead of the containing shape. Hence, the Supreme Court concluded, the Orange’s orange square was not inherently distinctive.



As to secondary meaning, Orange submitted before the Administrative Court of Madrid a statistical survey to show that 49% of Spanish consumers recognise IR No. 908,137 as a trade mark and, among them, 80% associate it with the applicant.  The Madrid Court considered that a percentage of 40% (the 80% of 49%) of respondents connecting the sign with Orange was not enough to assume the existence of a secondary meaning.  The Supreme Court, in turn, considered the district Court statements “unequivocal” and consistent, and consequently ineligible for further examination at that stage. Hence, it upheld the first instance decision and declared IR No. 908,137 ineligible for registration as a trade mark.

Arnold J’s Kit Kat reference to the CJEU and this Spanish Supreme Court’s decision sound significant to this Kat. In recent years there has been an overall willingness to interpret widely the rule by which “any signs capable of being represented graphically” may become a trade mark, so to smooth the way to exclusivity over colours, product shapes, sounds, holograms, moving images, and maybe smells and tastes (on this, see the Singapore Treaty). However, some Judges appear to be worried about the restrictions to competition that this may cause, seeking to put some brakes on this expansion by introducing absolute grounds not explicitly provided by law. 

Hence, instead of letting case-law randomly slamming on the brakes, isn’t it time to have a break and note that, although all trade marks are equal, some non-traditional signs are less equal than others and could deserve further, specific legal requirements explicitly provided by law to access to trade mark protection [likewise done with shape trade marks, but in a clearer manner, Merpel adds]?

Some good jazz to reflect upon it here.