• Skip to main content
  • Skip to primary sidebar
  • Skip to footer
+49 (0) 69 / 606 278 – 0
[email protected]
Contact form
Patent- & Rechtsanwaltskanzlei

Patent- & Rechtsanwaltskanzlei

  • Deutsch

+49 (0) 69 / 606 278 – 0

  • Facebook
  • Twitter
  • Instagram
  • LinkedIn
  • xing
  • Email
MENUMENU
  • Services
    • Advice On Protective IP Rights
    • Patent Application /TM Registration
    • Enforcement Of IP Rights
    • Defence Against IP Rights Enforcement
    • Costs
  • Company
    • Fields of Law
      • Patent Law
      • Utility Model Law
      • Employees‘ Inventions
      • Trademark Law
      • Design Law
      • Trademark and Product Piracy
      • Expert Opinions
    • Our Law Firm
      • Dr. Karl-Hermann Meyer-Dulheuer
      • Dr. Tim Meyer-Dulheuer
      • Dr. Klaus Zimmermann
      • Zhichao Ying
      • Eva Maria Amoah
    • Commitment
  • Contact
    • Where To Find Us
    • Write us!
    • Request call back
  • Blog

Colour mark: systematic arrangement of colours decisive

26. March 2021

The European Court (CFI) ruled on a contested colour mark showing a colour combination of two colours – reminiscent of the Red Bull ruling. The decisive question was whether there was a systematic arrangement of the colours in the colour mark.

Farbmarke Stihl Farbkombination

According to trademark law, a colour mark is a sign consisting of a colour without shape or contour or of a combination of colours. If it is a combination of colours, the trade mark application must contain a description of the spatial and uniform arrangement of the colours concerned and also the relationship of the colours concerned to each other (according to the Heidelberger Bauchemie judgment of 2004 ((C 49/02, EU:C:2004)).

This applied to the situation in the present case. The trademark applicant and plaintiff before the European Court is Andreas Stihl AG & Co. KG (Germany). The company applied for a European colour mark in 2008, which was published in 2011. The colour mark shows a colour combination of orange and grey; the goods claimed were ‘chain saws‘ in Nice Class 7.

In 2015, the intervener, Giro Travel Company (Romania), filed an application for a declaration of invalidity of the colour mark. Successfully: in the contested decision of the Board of Appeal, the application was granted and the colour mark was declared invalid. The graphic representation of the colour mark allows several combinations of the two colours, the Board of Appeal reasoned, and the description of the mark also does not provide the necessary precision with regard to the systematic arrangement.

Against this decision, Andreas Stihl AG & Co. KG before the European Court (CFI), which has now ruled on the matter.

Colour mark – duty of clarity and accuracy

The court first recalled the basic requirement for any trade mark: all economic operators must be able to take cognisance with clarity and precision of the registrations or applications of their actual or potential competitors, the court stressed. Therefore, a graphic representation within the meaning of Article 4 of Regulation No 40/94 must precisely identify the scope of protection.

It follows that a graphic representation consisting of two or more abstractly designated colours without contours must be systematically ordered by associating the colours in question with each other in a predetermined and uniform manner – and this had already been decided by the highest European court (ECJ) in the highly regarded Red Bull case.

Likewise, in the Red Bull colour combination cases, it had already been judicially decided that their graphic representation or accompanying description must show the exact hues of the colours in question, the ratios and their spatial arrangement.

However, the CFI added, a colour combination with a description in words could also constitute the required graphic representation within the meaning of Art. 4 of Regulation No. 40/94 – provided that the description is clear, precise, self-contained, easily accessible, intelligible and objective. The CFI referred to an ECJ judgment of 2003 (Libertel, C-104/01).

Systematic arrangement of the colours?

In this context, the Court examined the trade mark representation of the contested colour mark. Accordingly, the following trade mark representation was present: the combination of the colours orange (RAL 2010) and grey (RAL 7035) was shown together with the following description: “The colour orange is applied to the upper side of the casing of the chain saw and the colour grey is applied to the lower side of the casing of the chain saw”.

In this respect, it was indeed exciting to see how the CFI would decide. For the graphic representation of the contested colour mark showed a horizontal arrangement of the two colours orange and grey on top of each other – and only the descriptive text provided for application to a chainsaw.

Accordingly, the CFI weighed the matter up. It is true that the design of the two colours, defined by two identification codes, does not as such have any contours that give it a specific shape, the court found – and this would confirm the invalidity of the colour mark.

However, the description accompanying the trade mark application states that the mark takes the form of a part of a specific product, namely a chainsaw casing, the CFI emphasised (please see the ECJ’s Louboutin judgement). Moreover, it was clear from the description of the disputed mark that the colour combination which is the subject of the protection in question does not take the form of just any chainsaw casing, but the form of a casing visibly divided into two parts, an upper and a lower part.

This clarification, contained in the description of the disputed mark, set a greater limit to the shapes that the chainsaw housing can take, the CFI ruled. Consequently, the graphic representation did not consist of a mere juxtaposition of two or more colours without shape or contours and without systematic arrangement.

Moreover, the average consumer rarely has the opportunity to directly compare different brands of chainsaws; he must therefore rely on the imperfect image he has retained of them in his mind. It follows, according to the CFI, that the consumer must only recognise a chainsaw casing with two parts, namely the upper one in orange and the lower one in grey, at the time of purchase – irrespective of the exact shape of the casing.

The required precision and uniformity of the representation of the mark was therefore given, the CFI finally ruled and completely annulled the decision of the Board of Appeal and the invalidity of the colour mark found there.

Would you also like to protect or defend a design as a trademark?

Our lawyers have many years of expertise in design law and trade mark law as well as in the entire field of intellectual property and are entitled to represent you before any court – in Germany and also internationally.
Please feel free to contact us if you are interested.

 

Sources: 

Judgement of CFI, colour mark combination, EU:T:2021:163

Image:

own design using fotoblend | pixabay.com | CCO License

  • share  37 
  • share 
  • share 
  • tweet  
  • share 

Category iconTrademark Law Tag iconjudgment,  CJEU,  CFI,  shape,  colour,  invalidity,  EU Trade Mark,  colour combination,  colour trade mark,  shape of product,  trade mark representation,  colour trade mark Stihl,  Stihl chainsaw,  chainsaw,  orange-grey,  contourless colour,  colour trade mark representation,  EU:T:2021:163,  Andreas Stihl AG & Co. KG

Reader Interactions

Leave a Reply Cancel reply

Your email address will not be published. Required fields are marked *

Primary Sidebar

More articles about: Trademark Law

All articles

Blog Menu

  • Design Law
  • Healthcare & Lifesciences
  • International Intellectual Property
  • Licenses
  • News from our law firm
  • Overall
  • Patent Law
  • Product- and Trademark piracy
  • Trademark Law
This form uses Google Recaptcha.

You must accept cookies from Google recaptcha to use this form.

More information can be found in our privacy policy.

load form

Recent Posts

  • Chianti vs GHISU: advantage taken unfairly of the earlier mark 15. April 2021
  • ECJ on legitimate interest: Appeal against amendment of specifications 15. April 2021
  • Case law product similarity: consumer attention 13. April 2021
  • OLG Düsseldorf: No compensation for damages of gratuitous licensing 9. April 2021

Fields of Law

  • Patent Law
  • Utility Model Law
  • Employees’ Inventions
  • Trademark Law
  • Design Law
  • Trademark and Product Piracy
  • Expert Opinions
  • Costs

Das könnte Sie auch interessieren:

15. April 2021
Chianti vs GHISU: advantage taken unfairly of the earlier mark

Chianti vs GHISU: advantage taken unfairly of the earlier mark

15. April 2021
ECJ on legitimate interest: Appeal against amendment of specifications

ECJ on legitimate interest: Appeal against amendment of specifications

13. April 2021
Case law product similarity: consumer attention

Case law product similarity: consumer attention

9. April 2021
OLG Düsseldorf: No compensation for damages of gratuitous licensing

OLG Düsseldorf: No compensation for damages of gratuitous licensing

9. April 2021
Alkemie vs. Alkmene: word/figurative mark vs. earlier word mark

Alkemie vs. Alkmene: word/figurative mark vs. earlier word mark

25. March 2021
Cyprus unsuccessful against mark Halloumi from Greece

Cyprus unsuccessful against mark Halloumi from Greece

Footer

Contact

Franklinstr. 61-63
D-60486 Frankfurt am Main
Germany

+49 (0) 69 / 606 278 – 0
+49 (0) 69 / 606 278 – 199
[email protected]

Customer Reviews

Meyer-Dulheuer MD Legal Patentanwälte PartG mbB Patentrecht, Markenrecht, Eigentum hat 4,78 von 5 Sternen 23 Bewertungen auf ProvenExpert.com

Fields of Law

  • Patent Law
  • Utility Model Law
  • Employees’ Inventions
  • Trademark Law
  • Design Law
  • Trademark and Product Piracy
  • Expert Opinions
  • Costs

Law Firm

  • Request non-binding call back
  • Info secure emails
  • Company
  • Our Law Firm
  • ISO Certificate
  • Privacy Policy
  • Data handling for clients
  • Imprint

Follow Us

  • Facebook
  • Twitter
  • Google+
  • LinkedIn
  • xing
  • Email

Newsletter Signup

This form uses Google Recaptcha.

You must accept cookies from Google recaptcha to use this form.

More information can be found in our privacy policy.

load form

© Patent- & Rechtsanwaltskanzlei Meyer-Dulheuer MD Legal Patentanwälte PartG mbB

Kontaktformular

 

Rufen Sie uns an, schicken Sie uns eine Mail oder füllen Sie das Kontaktformular aus.

+49 (0) 69 / 606 278 – 0
[email protected]

This form uses Google Recaptcha.

You must accept cookies from Google recaptcha to use this form.

More information can be found in our privacy policy.

load form

Contact Form

 

Give us a call, send us an email or fill out the contact form.

+49 (0) 69 / 606 278 – 0
[email protected]

This form uses Google Recaptcha.

You must accept cookies from Google recaptcha to use this form.

More information can be found in our privacy policy.

load form