General Court denies protection for OMV abstract colour combination trade mark – despite INTA’s and MARQUES’ intervention

The protection of abstract colour trade marks is notoriously difficult to attain in the EU. Even statements in interventions from heavyweights such as INTA and MARQUES in the OMV colour case (IPKat here) did not convince the General Court to reconsider the case law in a recent judgment concerning an abstract colour combination mark (case T-38/24).

Background

On 27 January 2021, the petrochemical company OMV designated the EU in its international registration no. 01593116 for the colour mark 

It covered a broad range of goods and services in classes 1, 4, 35, 37, 39, 40, 42, 43, 44, including the following:

Class 1: Chemical preparations for use as additive to fuels for improving combustion; chemical additives to motor fuel; hydrogen.

Class 4: Fuels; non-chemical additives for fuels; illuminants; electrical energy; lubricants; industrial oil.

Class 35: Retail services in relation to vehicle equipment, namely lubricants, brake fluid, chemical and non-chemical additives for fuels and lubricants, antifreeze, cleaning and fragrancing preparations;

Class 37: Building, construction or demolition of facilities or installations for exploration, exploitation, processing, production, storage, transport or distribution of hydrocarbons, hydrogen, minerals, bitumen, fuels, illuminants, lubricants, industrial oil or energy.

OMV indicated the colours to be gentian blue (RAL 5010) and yellow green (RAL 6018).

The examiner of the European Union Intellectual Property Office (‘EUIPO’) partially refused OMV’s trade mark inter alia for the goods and services mentioned above, finding that the trade mark lacked distinctiveness (Art. 7(1)(b) EUTMR).

OMV appealed to the EUIPO’s Board of Appeal (‘BoA’). OMV had submitted a large amount of evidence, including market surveys for Austria, Hungary, Romania and Slovakia. The BoA dismissed the action (R 798/2023-5). OMV appealed to the General Court.

The General Court’s decision

The General Court dismissed OMV’s appeal. 

 

The judges recalled consistent case law, according to which the principles for the assessment of the distinctive character of colour trade marks are no different from those of other signs. Nevertheless, the relevant public’s perception may not necessarily be the same as in the case of a word or figurative mark consisting of a sign that bears no relation to the appearance of the goods that it identifies.

For a colour combination to be able to fulfil the origin function, it must contain elements capable of distinguishing it from other colour combinations and of attracting the consumer’s attention.

The judges confirmed that the strict approach for the assessment of distinctiveness of single colour marks as laid down in the Libertel judgment of the Court of Justice of the EU (case C-104/01) also applies to colour combination marks, as it was found in Heidelberger Bauchemie (case C‑49/02, IPKat here).

OMV’s argument that the BoA relied incorrectly on the requirement not to unduly restrict the availability of colours for competitors was also dismissed. The judges held that the risk of undermining the general interest in not unduly restricting the availability of colours varies according to the characteristics of each mark and that this risk is generally lower for combinations of colours with a systematic arrangement than in the case of a single colour. Nevertheless, this general interest has to be taken into account in assessing the distinctive character of single colour and colour combination marks.

The Court was not convinced of the argument that each filling-station operator has its own colour scheme to differentiate its filling stations either. OMV produced an expert opinion to establish this fact. The judges found that the opinion merely confirms that consumers identify the commercial origin of the gas stations only if they are already accustomed to associating those colours with a specific undertaking. This argument may be taken into account when assessing acquired distinctiveness but not when determining inherent distinctiveness.

OMV produced market studies from November 2022 and March 2023. They were deemed irrelevant because they were conducted after the filing date of the trade mark application (27 January 2021).

The judges also found that the colours green and blue were used in various tones and arrangements by other filling-station operators. The fact that these tones are not identical to OMV’s colours did not allow the conclusion that the latter are inherently distinctive.

Further, the Court confirmed that the colours green and blue indicate the concepts of ecology and environmental protection and may refer to the ecological characteristics of goods or services.

The argument that the colours blue and green may convey meanings not related to ecology or the environment does not allow the conclusion that they convey specific information on the origin of the goods and services.

Comment

The decision is in line with consistent case law of the CJEU and General Court. Abstract colours and colour combinations are presumed to lack inherent distinctiveness. The exceptions to this presumption are very narrow. All arguments that relate to the learned perception of the relevant public (i.e. the perception based on the experience in the market place) are, in principle, irrelevant to the assessment of inherent distinctiveness. This includes all items of evidence concerning the actual use of colours, such as surveys, declarations from chambers of commerce and the use of colours by competitors. They are, however, essential in establishing acquired distinctiveness. 

 

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