CJEU dismisses Red Bull’s appeal concerning its colour combination marks

In a judgment issued yesterday, the Court of Justice of the European Union (CJEU) dismissed Red Bull’s appeal against the EU General Court’s decision [here], which had upheld the EUIPO’s First Board of Appeal’s finding that the Red Bull’s colour combination marks would be invalid.

Background

Red Bull successfully registered two EU trade marks, one in 2005 and another one in 2011, for the combination of blue and silver in Class 32 (energy drinks) of the Nice Classification:

The first mark specified that: ”Protection is claimed for the colours blue (RAL 5002) and silver (RAL 9006). The ratio of the colours is approximately 50%–50%.” The second mark specified that: ”The two colours will be applied in equal proportion and juxtaposed to each other. Blue (Pantone 2747C), silver (Pantone 877C).”

On 20 September 2013 a Polish company, Optimum Mark, filed an application with the EUIPO for a declaration of invalidity of both marks.

It argued that the first mark did not meet the requirements of what is now Article 7(1)(a) Regulation 2017/1001 (EU Trade Mark Regulation (EUTMR), since its representation did not systematically arrange the colours by associating them in a predetermined and uniform way. In addition, the description of the trade mark, according to which the ratio of the two colours of which the mark was composed was ‘approximately 50%–50%’, allowed for numerous combinations, with the result that consumers would not be able to make further purchases with certainty.

As regards to the second mark, it argued that this mark failed to meet the requirements of Article 7(1)(a) EUTMR. Also, on account of the fact that the term ‘juxtaposed’ might have several meanings, the description of the trade mark did not indicate the type of arrangement in which the two colours would be applied to the goods: as such, the representation would not be self-contained, clear and precise.

Previous instalments

The EUIPO Cancellation Division declared the two marks in question invalid in two separate proceedings, inter alia on the ground that their representation was not sufficiently precise.

The decisions were subsequently appealed to the First Board of Appeal of EUIPO which dismissed the appeals in their entirety. Following an appeal before the EU General Court, this upheld the Cancellation Division’s ruling in 2017, prompting Red Bull to appeal the ruling one last time to the CJEU.

The CJEU appeal

Red Bull submitted five grounds in support of its appeal, alleging breach of:

• The principles of equal treatment and proportionality in connection with Article 4 and Article 7(1)(a) EUTMR,
• Article 4 and Article 7(1)(a) EUTMR,
• The principle of respecting legitimate expectations
• The principle of proportionality, and
• Article 134(1) and Article 135 of the Rules of Procedure of the General Court.

The present analysis revolves around the second ground of appeal, namely the one concerning Article 4 and 7(1)(a) EUTMR.

Red Bull submitted that the General Court had misinterpreted the judgment in Heidelberger Bauchemie (C‑49/02) in holding that marks consisting of a combination of colours must systematically specify the spatial arrangement of the colours in question and, consequently, concluding that, in the present case, the graphic representation of the marks at issue was insufficiently precise without such an arrangement.

In particular, by the first part of the second ground of appeal, Red Bull contended that Heidelberger Bauchemie (C‑49/02) should be interpreted in the specific context of the case which had given rise to that judgment. Furthermore, by considering that the mere juxtaposition of colours was not sufficient to constitute a precise and uniform graphic representation, the General Court had failed to consider that a trade mark must be viewed as filed, as per the CJEU decision in Apple (C‑421/13). As such, it had failed to consider the specific feature of marks consisting of a combination of colours, which is not having contours.

The CJEU judgment

According to the CJEU, it is clear from earlier case law that a sign may be registered as a mark only if the applicant provides a graphic representation in accordance with the requirements in Article 4 EUTMR, to the effect that the subject matter and scope of the protection sought are clearly and precisely determined. Where an application is accompanied by a verbal description of the sign, that description must serve to clarify the subject matter and scope of the protection sought under trade mark law; such a description cannot be inconsistent with the graphic representation of a trade mark or give rise to doubts as to the subject matter and scope of that graphic representation (Hartwall, C‑578/17)).

In Heidelberger Bauchemie (C‑49/02) the CJEU held that a graphic representation of two or more colours, designated in the abstract and without contours, must be systematically arranged in such a way that the colours concerned are associated in a predetermined and uniform way. It also noted that the mere juxtaposition of two or more colours, without shape or contours, or a reference to two or more colours ‘in every conceivable form’, will not exhibit the qualities of precision and uniformity required by Article 4.

Importantly, such representations would allow numerous different combinations, which would not permit the consumer to perceive and recall any particular combination, thereby failing to enable them to make further purchases with certainty. Similarly, the competent authorities and economic operators would not know the scope of the protection afforded to the proprietor of the trade mark in question.

Therefore, and contrary to what Red Bull had submitted, requiring a mark consisting of a combination of colours to display a systematic arrangement associating the colours in a predetermined and uniform way cannot transform that type of mark into a figurative mark, since that requirement does not mean that the colours must be defined by contours.

Neither could Red Bull rely on the CJEU judgment in Apple (C‑421/13) in support of its claim that the General Court had erred in holding that the graphic representation of the marks at issue was insufficiently precise. That case merely concerned graphic representation of ‘a collection of lines, curves and shapes’, which was not the case here.

In light of all these considerations, the CJEU concluded that the General Court had not erred in its assessment of Article 4 and 7(1)(a) EUTMR.

The General Court was right to consider that the description of the marks could result in numerous combinations with respect to the arrangement of the two colours. Therefore, marks that allow for a plurality of reproductions that are neither determined in advance nor uniform are considered incompatible with the EUTMR.