Colour mark: systematic arrangement of colours decisive

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.

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.