Red Bull GmbH v EUIPO

This is an appeal decision in respect of two EUIPO First Board of Appeal decisions relating to invalidity proceedings between Red Bull and Optimum Mark. The case is about two EU trade mark registrations for energy drinks for the colour combination blue and grey and their respective descriptions.
The General Court has held that neither of these registrations are valid. Distinctiveness was not strictly the issue, because both passed examination having convinced the EUIPO that they had acquired distinctiveness in the EU. However, they have now been held invalid because they do not fit the requirements of a trade mark.

The two colour trade marks in question (the ‘Contested Marks’) are visually represented as follows:

 CGL article image 2                                CGL article image 2

The colour mark on the left came with a description of “Protection is claimed for the colours blue (RAL 5002) and silver (RAL 9006). The ratio of the colours is approximately 50%-50%”. The colour mark on the right came with the description “The two colours will be applied in equal proportion and juxtaposed to each other. Blue (Pantone 2747C), silver (Pantone 877C).”

Initially, Optimum Mark applied for a declaration of invalidity in respect of the Contested Marks and in October 2013 the Cancellation Division declared both marks invalid. They found that the graphic representation of those marks constituted the ‘mere juxtaposition of two or more colours, designated in the abstract and without contours’. They did not exhibit the qualities of precision and uniformity since they allowed numerous different combinations which would not permit the consumer to perceive and recall a particular combination, thereby enabling the consumer to repeat with certainty the experience of a purchase. In addition, it would not allow the competent authorities and economic operators to know the scope of the protection afforded to the proprietor of the Contested Marks.

Further, the graphic representation of the Contested Marks, accompanied by the description, did not make it possible to determine the specific arrangement of colours in a way which defined one particular combination of colours presented in equal proportions, and therefore the subject of the protection afforded by the Contested Marks. The Cancellation Division stated that, although a description of a graphic representation is not required to be submitted, it is possible that the registration of a trade mark could be refused or declared invalid where a description is necessary to ensure that the registration of a mark complied with Regulation No. 207/2009 (the ‘CTMR’).

Red Bull appealed against the Cancellation Division’s decision and in December 2014 the First Board of Appeal of the EUIPO dismissed the appeals as unfounded. The Board of Appeal held that Red Bull could not properly rely on the principle of protection of legitimate expectations, which the Red Bull claimed had been infringed by the Cancellation Division, since the fact that the examiner had requested the inclusion of a description of the Contested Marks and had accepted the wording, did not amount to precise, unconditional and consistent information on which the applicant could have based its legitimate expectation. Furthermore, when the Contested Marks were registered, there was no established practice within EUIPO with regard to the registration of colour EU trade marks and any such practice, no matter how current, did not amount to precise, unconditional and consistent information and was irrelevant for the purpose of assessing whether or not the graphic representation of a trade mark met the requirements of the CTMR. In addition, the Board of Appeal took the view that the Cancellation Division was right to find that the contested marks had been registered contrary to the CTMR for the following reasons:

1. That the Contested Marks had acquired distinctive character does not allow them to override the requirements of the CTMR;
2. A description may be necessary for a colour mark of this kind and when a description is provided it forms an integral part of the mark;
3. In order to be precise and durable, as required by the case law, combinations of colours must be systematically arranged by associating the colours concerned in a predetermined and uniform way. The Contested Marks and their descriptions were presented in a way that was not uniform and could be presented in many different ways that could all produce a different overall impression; and
4. If Red Bull wished the Contested Marks to protect the two colours, blue on the left and silver on the right, presented in equal 50/50 proportions as divided by a central vertical line then the description should have said so.

The case was then appealed to the General Court of the EU by Red Bull. Red Bull’s first plea was that the Board of Appeal’s decision was an infringement of Article 4 and Article 7(1)(a) of the CTMR and breach of the principles of proportionality and of equal treatment. They argued under this heading as follows:

1. The Board of Appeal had interpreted the Heidelberger case along with Article 4 of the CTMR unduly strictly, which resulted in disproportionate and discriminatory treatment of colour marks of this kind. Red Bull argued that Heidelberger does not apply to colour marks such as the Contested Marks particularly because it relates to registrations for colour combinations in every conceivable form, unlike their marks;
2. Requiring a detailed description of the way the Contested Marks would be used on the product is not entirely relevant to Art. 4 of the CTMR, is not a requirement for registration and such a description would render a colour mark as more of a figurative mark.
3. Requiring such an explicit description is tantamount to requiring an additional condition for registration which is not necessary for any other kind of mark; and
4. It is sufficient, for the purposes of registering an EUTM consisting of a combination of colours for such a mark to be explicitly stated to be a mark of that kind, to be shown graphically, and for the colours to be identified by reference to internationally recognised colour identification codes. The rule that ‘what you see is what you get’ visually conveys the remaining parameters needed in order to identify the trade mark concerned.

Red Bull’s second plea was supported by an intervener called Marques. Here they criticised the Board of Appeal for having concluded that the fact that the examiner accepted the wording of the descriptions at the time when the applications for the Contested Marks were filed did not support a legitimate expectation, and that an established practice of the EUIPO either did not exist or did not amount to information on which a legitimate expectation could be based. Further, Red Bull submitted that, having registered the Contested Marks on the basis of the distinctiveness they had acquired through use, the EUIPO had implicitly ruled on the compliance of those marks with Article 4 of the CTMR.

The General Court rejected all of the points made by Red Bull under both plea headings. Red Bull’s application was dismissed and were ordered to pay the EUIPO’s and Optimum Mark’s costs. Marques, the other intervener, were ordered to bear their own costs.

The core of the General Court’s reasoning is that the Contested Marks along with their descriptions were not sufficiently precise. Economic operators, along with authorities and the public, must be able to understand the rights of third parties from inspecting the register. A sign has to be perceived “unambiguously, uniformly and durably”. Combinations of colours must be systematically arranged by associating the colours concerned in a pre-determined and uniform way. The mere juxtaposition of two colours (as in the above graphical representations) is not sufficiently precise because such representations would allow numerous different combinations.

Further, descriptions are not compulsory for EUTMs but if you use one, it becomes an “integral part” of your registration along with the graphic representation. In this case, Red Bull’s descriptions referred to equality in proportions and one qualified that with the word “approximately”. Colours must also be “represented in accordance with a specific arrangement or layout associating the colours in a predetermined and uniform way, in order to prevent numerous different combinations of those colours which would not permit the consumer to perceive and recall a particular combination”. It was found that Red Bull’s descriptions did not do this. The Court stated that “the arrangement of two colours may fail to be pre-determined or uniform not only because of the different proportions of those colours but also because of the different spatial position of those colours in the same proportions.” The representation and/or description of the mark has to contain a “systematic special arrangement of the colours”.

In respect of Red Bull’s second plea, it the Court stated that just because the examiner accepted two descriptions that did not comply with the Heidelberger requirements cannot preclude the Contested Marks from being declared invalid if they were registered in breach of one of the absolute grounds for refusal provided for in Art. 7 of the CTMR. Even if one assumes that the information supplied by the examiner during the registration process may be described as precise and unconditional assurances, case law states that such assurances did not comply with the applicable provisions, meaning they could not sustain a legitimate expectation. Further, whether or not the registration of the EUTMs was preceded by discussions concerning the information to be supplied in order to ensure that the applications are in order and complete, this cannot protect the proprietor of that mark from the risk of its being declared invalid at a later date.

It seems that to get such a colour mark, the proprietor will need to use a sufficiently precise description that fully describes how the colour mark is presented and used in the real world. This decision is very much a policy one that states the EU courts do not want to grant trade mark monopolies of this type as they are too broad. In this regard, it is worth noting that there are not many two colour combinations on the EUTM register. There are approximately 90 registrations for either a single colour, or a combination of two colours.

This decision was made under the old CTMR which has since been updated. The General Court gave an unexpected observation on the effect of the recent change to EU trade mark law which removed the requirement of graphical representation. The General Court remarked that the removal of this requirement has the effect of providing for a more restrictive regime. It could now be seen that due to this decision it is arguably more difficult to get a registered mark for two colours than for one because of how meticulous the description needs to be.

Judgment Date: 30 NOVEMBER 2017

Link to Judgment

Red Bull colour mark registrations declared invalid because they are not sufficiently precise