• EUROPEAN PERSPECTIVES

    The Registrability of Colour per se

    In a recent case brought before the European Court of Justice (Libertel Groep v Benelux Merkenbureau), the principle and practice of registering colours as trade marks was considered.

    Libertel are a Dutch mobile telephone operator. They are now part of the Vodafone group. For a number of years, they had used a particular shade of the colour orange on the packaging of and in the advertisements for their mobile phone products and services. In August 1996, they sought to register their orange colour as a trade mark in respect of telecommunications equipment and services at the Benelux Trade Mark Office. The application consisted of a rectangular representation of the colour together with the one word description “orange”.

    The case was rejected by the Office and, on appeal, the Gerechtshof. Libertel appealed further to the Hoge Raad. This latter Dutch Court sought preliminary rulings from the ECJ on a number of questions surrounding the principle of registering colour marks which were not in any way spatially limited (i.e. colour per se marks).

    On 6 May 2003 the European Court gave their rulings and clarified the practice that will have to be followed in the EU in this area from now on. The Court ruled as follows:

    • A colour per se is capable, in relation to a product or service, of constituting a sign. It may also be capable of distinguishing the goods and services of one undertaking from those of others.
    • To be acceptable, the graphic representation of a sign must be clear, precise, self-contained, easily accessible, intelligible, durable and objective.
    • A sample of a colour is not, on its own, an acceptable graphic representation. In certain cases, such as a paper representation, it may deteriorate with time and therefore not have the necessary durability.
    • By contrast, a verbal description of a colour mark or a combination of such a verbal description and a colour sample may, depending on the circumstances, constitute an acceptable graphic representation. The Court noted, in particular, that internationally recognised colour identification codes (e.g. Pantone numbers) were a precise and stable form of verbal description.
    • When considering the registration of a colour per se as a trade mark, one question to be considered by the authorities was whether the colour, as a matter of public interest, should remain available to all. The private interest of a single trader wishing to monopolise one or more colours as trade marks should be weighed against the public interest of not unduly restricting the availability of the colours for the use of all traders.
    • The wider the specification of goods and/or services claimed by an applicant for a colour per se mark, the more likely the monopoly, if granted, would conflict with the public interest and the maintenance of a system of undistorted competition. The breadth of the specification is therefore a relevant issue when considering registrability.
    • The examination of an EU national trade mark application (and, by inference, a CTM application) should not be minimal. It should be a stringent and full examination to prevent trade marks from being improperly registered.
    • A colour per se mark will not normally be inherently capable of distinguishing the goods of a particular undertaking. It follows that distinctiveness without prior use is unlikely to be present, other than in exceptional circumstances. A colour per se mark may, however, acquire a distinctive character through use. Evidence that other traders do not use the colour applied for and that the relevant public recognises the colour as an indicator of origin will normally be required to succeed.

    Comment

    The most important principle to come from this ruling is that it remains possible to register colours per se as trade marks in the European Union (EU). In the vast majority of cases, registration will only be achieved if the evidence of distinctiveness acquired by use is convincing. From now on, we can expect EU trade mark applications for colour per se marks to be rejected as a matter of course, unless the applicant can produce a survey or surveys clearly linking the colour to only one source of the goods or services. The barrier to achieving registration is therefore high, but not insuperable.

    Trade mark practitioners also need to take note of the ECJ’s comments on the proper representation of colour trade marks and the appropriate identification of the goods and services claimed. In the former case, it remains good practice to combine a verbal description of the mark, usually by reference to an international identification code (e.g. Pantone number), with a colour sample. In the latter case, the general principle should be, the narrower the specification, the better. Thus, a pharmaceutical company wishing to register a colour per se mark for the colour of their tablets, should restrict the specification to the precise medicine contained in the tablets.

    On the issue of an appropriate graphic representation, the writer believes that the ECJ’s view is out of date. In this era of electronic databases, it is believed that a colour sample can be captured digitally and permanently. Such an electronic representation will not alter with time. By contrast, international identification codes can be (and are) erased from catalogues and are therefore, by no means, permanent. Whatever the real situation, however, practitioners should follow the ECJ’s preferred guidelines.

    The ECJ’s ruling in the Libertel case should also be contrasted with the CFI’s ruling in the Viking appeal. In that appeal against OHIM’s rejection of a two colour (grey/green) combination (CTM459149), the Court criticised the particular form of mark applied for, which was two juxtaposed coloured rectangles, since this did not reflect the colours as they were used in practice. Rather oddly, it appears acceptable to protect a single colour without restricting the claim to the precise form in which it is used, but not acceptable to do the same for a two or three colour combination.

    Finally, the Court’s comments on the level of examination that should be set when reviewing marks in the EU on absolute grounds, are difficult to square with the earlier acceptance of trade marks such as Baby-Dry, Doublemint and New Born Baby. It seems that every time the ECJ (or CFI) opines on the level of distinctiveness required to achieve trade mark registration, the pendulum swings wildly between a relatively low level and a relatively high level. This cannot be good for the development of a consistent examination practice in EU national trade mark offices and at OHIM.