Trade marks protecting a colour as such and coloured figurative marks have one thing in common: colour. Granted, this is obvious – but not as obvious as the answer to the question whether they should be held to the same standards with respect to their graphical representation. This is particularly true for trade marks filed before the introduction of electronic filing and digital registers, as the German Supreme Court’s (“GSC”) recent decision in Roter Punkt (meaning “red dot”, case I ZB 104/25) illustrates.
Background
In 1996, the trade mark owner obtained registration for the following figurative trade mark consisting of a red dot:
Background
In 1996, the trade mark owner obtained registration for the following figurative trade mark consisting of a red dot:
It was filed on paper and registered on the basis of acquired distinctiveness for “vacuum-insulated containers, namely vacuum flasks, vacuum jugs and insulated food containers”.
A third party filed an invalidity application arguing, inter alia, that the trade mark was not sufficiently represented graphically. The German Patent and Trade Mark Office and the German Patent Court (“GPC”) rejected the invalidity application.
The German Supreme Court’s decision
The Court dismissed the invalidity applicant’s appeal.
1. The judges held that the version of the German Trade Mark Act in force in 1996 applied, which implemented the first EC Trade Mark Directive 89/104/EEC (“TMD”).
It provided in Sec. 8 (1) (implementing Art. 2 TMD) that the sign must be “capable of being represented graphically”.
2. The invalidity applicant argued that the representation in the application differed from that in the register. The Court held that only the representation in the register is decisive for the determination of the trade mark’s subject matter and scope of protection. Third parties must be able to ascertain the subject matter and scope of protection from the register.
Further, the requirement of graphical representation serves three purposes, namely (1) providing a fixed form for the assessment of the trade mark in the registration procedure, (2) enabling registration in the register and (3) informing the public of the trade marks in force and their subject matter as well as their scope of the protection conferred by them through publication of the registration.
3. The Court assessed whether the contested mark was sufficiently represented graphically. It referred to the decision of the Court of Justice of the EU (“CJEU”) in Sieckmann and held that graphical representation requires the mark to be sufficiently clear, precise, self-contained, intelligible, objective and durable so that its subject matter and scope of protection can be determined clearly and permanently.
The judges found that the subject matter of a figurative mark is determined by the graphical design and the colour(s).
a. It was undisputed that the circle itself was sufficiently precise.
b. However, the colour was disputed to be sufficiently precise.
aa. Apparently, the trade mark owner had submitted in the application several representations of the sign which showed different shades of red. The invalidity applicant argued that this makes the trade mark indeterminate because it is not clear which colour is actually protected. The Court referred to its finding that the registration takes priority over the application.
bb. The judges further held that the graphical representation is sufficiently durable. According to the CJEU’s Libertel decision, an abstract colour mark is not represented in a sufficiently durable way if the colour sample submitted in the application may deteriorate over time (para. 32). While the colour sample of the trade mark owner may deteriorate, the colour in the register has been saved electronically. The electronic representation is not subject to deterioration.
cc. Finally the judges found that there was no need to specify the colour by using an internationally recognised colour identification code (such as RAL or Pantone). A registered mark is not sufficiently precise if, owing to the indeterminacy of its form, dimensions, appearance, design or colour, it may encompass a multitude of different manifestations. The Court held that the contested sign consisted of a circle in a particular shade of red. This was considered a reliable basis for assessing genuine use or conflicts with other trade marks.
Comment
The decision raises a number of concerns:
1. According to the judgment, differences between the application and the registration are irrelevant and the registration is decisive. This legal issue should have been referred to the CJEU because the position taken by the GSC is not at all obvious from the TMD.
The German Supreme Court’s decision
The Court dismissed the invalidity applicant’s appeal.
1. The judges held that the version of the German Trade Mark Act in force in 1996 applied, which implemented the first EC Trade Mark Directive 89/104/EEC (“TMD”).
It provided in Sec. 8 (1) (implementing Art. 2 TMD) that the sign must be “capable of being represented graphically”.
2. The invalidity applicant argued that the representation in the application differed from that in the register. The Court held that only the representation in the register is decisive for the determination of the trade mark’s subject matter and scope of protection. Third parties must be able to ascertain the subject matter and scope of protection from the register.
Further, the requirement of graphical representation serves three purposes, namely (1) providing a fixed form for the assessment of the trade mark in the registration procedure, (2) enabling registration in the register and (3) informing the public of the trade marks in force and their subject matter as well as their scope of the protection conferred by them through publication of the registration.
3. The Court assessed whether the contested mark was sufficiently represented graphically. It referred to the decision of the Court of Justice of the EU (“CJEU”) in Sieckmann and held that graphical representation requires the mark to be sufficiently clear, precise, self-contained, intelligible, objective and durable so that its subject matter and scope of protection can be determined clearly and permanently.
The judges found that the subject matter of a figurative mark is determined by the graphical design and the colour(s).
a. It was undisputed that the circle itself was sufficiently precise.
b. However, the colour was disputed to be sufficiently precise.
aa. Apparently, the trade mark owner had submitted in the application several representations of the sign which showed different shades of red. The invalidity applicant argued that this makes the trade mark indeterminate because it is not clear which colour is actually protected. The Court referred to its finding that the registration takes priority over the application.
bb. The judges further held that the graphical representation is sufficiently durable. According to the CJEU’s Libertel decision, an abstract colour mark is not represented in a sufficiently durable way if the colour sample submitted in the application may deteriorate over time (para. 32). While the colour sample of the trade mark owner may deteriorate, the colour in the register has been saved electronically. The electronic representation is not subject to deterioration.
cc. Finally the judges found that there was no need to specify the colour by using an internationally recognised colour identification code (such as RAL or Pantone). A registered mark is not sufficiently precise if, owing to the indeterminacy of its form, dimensions, appearance, design or colour, it may encompass a multitude of different manifestations. The Court held that the contested sign consisted of a circle in a particular shade of red. This was considered a reliable basis for assessing genuine use or conflicts with other trade marks.
Comment
The decision raises a number of concerns:
1. According to the judgment, differences between the application and the registration are irrelevant and the registration is decisive. This legal issue should have been referred to the CJEU because the position taken by the GSC is not at all obvious from the TMD.
The Libertel judgment seems to point to the opposite conclusion: Requiring that the trade mark must be represented durably in the application itself indicates that the application is decisive and not the registration.
Also, why should the register not be corrected? After all, the applicant would obtain a trade mark it has not applied for.
2. The durability argument is also questionable in light of the Libertel judgment. As mentioned before, Libertel points to the application being decisive and not the registration. Further, the electronic representation required a scan of the original, which entails the risk that the scan is not true to the original. Given the state of scanning technology at the filing date in 1996, this risk seems rather high.
3. Not requiring a classification code is also not a straightforward position. The colour of a figurative mark is part of the sign and determines its subject matter and scope of protection. In Libertel, the applicant submitted an orange rectangle, which was supposed to be an abstract colour mark. This is not that far away from the red dot in the GSC’s decision. The difference between an abstract colour mark and the red dot figurative mark is that the latter protects the colour in the shape of a circle while the former protects the colour as such, meaning without contours. However, does this justify different standards for the (graphical) representation of the marks?
Also, why should the register not be corrected? After all, the applicant would obtain a trade mark it has not applied for.
2. The durability argument is also questionable in light of the Libertel judgment. As mentioned before, Libertel points to the application being decisive and not the registration. Further, the electronic representation required a scan of the original, which entails the risk that the scan is not true to the original. Given the state of scanning technology at the filing date in 1996, this risk seems rather high.
3. Not requiring a classification code is also not a straightforward position. The colour of a figurative mark is part of the sign and determines its subject matter and scope of protection. In Libertel, the applicant submitted an orange rectangle, which was supposed to be an abstract colour mark. This is not that far away from the red dot in the GSC’s decision. The difference between an abstract colour mark and the red dot figurative mark is that the latter protects the colour in the shape of a circle while the former protects the colour as such, meaning without contours. However, does this justify different standards for the (graphical) representation of the marks?
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