• EUROPEAN PERSPECTIVES

    The ECJ’s recent judgment in Heidelberger Bauchemie GmbH (Case C-49/02) contains the latest guidance on the registrability of colours as trade marks in the E.U. In interpreting the law on registrability of colour combinations, however, Heidelberger raises more questions than it answers.

     

    The Reference

    Heidelberger had applied to the German Patent and Trademark Office for registration of a trade mark, the representation of which consisted of a piece of paper, the upper part of which was blue, and the lower part of which was yellow. The description read,

    “The trade mark applied for consists of the applicant’s corporate colours which are used in every conceivable form, in particular on packaging and labels.

    The specification of the colours is:

    • RAL 5015/HKS 47 – blue
    • RAL 1016/HKS 3 – yellow”

    Registration was sought in respect of building trade products such as adhesives, solvents, paints, varnishes and insulating materials.

    The German PTO rejected the application on the grounds that the mark was not capable of distinguishing the goods of one trader from those of another. Heidelberger appealed to the Bundespatentgericht, who referred the following question to the ECJ:

    “Do colours or combinations of colours which are the subject of an application for registration as a trade mark, claimed in the abstract, without contours and in shades which are named in words by reference to a colour sample and specified according to a recognised colour classification system, satisfy the conditions for capability of constituting a trade mark for the purposes of Article 2 [of the Directive]?

    In particular, for the purposes of Article 2 of the Directive, is such an ‘(abstract) colour mark’

    (a) a sign,

    (b) sufficiently distinctive to be capable of indicating origin,

    (b) capable of being represented graphically?”

     

    The Ruling

    The Court had ruled on colour marks before in the May 2003 decision in Libertel (Case C-104/01). In that case, it had accepted that a colour per se, not spatially delimited, may, in respect of certain goods and services, have a distinctive character within the meaning of Article 3 (1) (b) of the E.U. Trade Marks Directive, provided it was graphically represented in a way that enabled it to be identified with clarity and precision.

    Nevertheless, there was only a limited number of colours. In assessing distinctiveness, regard must therefore be had to the general interest in not unduly restricting the availability of colours for other traders who offer goods or services of the same type.

    The Court stood by this reasoning in Heidelberger, and went further to justify it. There was a public interest in not unduly restricting the availability of colours for general use, it explained, because colours were often used for decorative purposes or to attract the attention of consumers without conveying any meaning. Therefore, not only should examination take this into account, but the graphic representation must be so clear and precise that it would always be perceived unambiguously and uniformly. Without this, the trademark registration authorities could not carry out their examination function, and traders could not confidently identify the extent of third-party rights.

    In answer to the question posed, the Court held that a colour combination which has not been spatially delimited is not a registrable trade mark, because it is not sufficiently precise that competitors can see from the register exactly what is protected.

    The Court elaborated, “the mere juxtaposition of two or more colours, without shape or contours, or a reference to two or more colours ‘in every conceivable form’…does not exhibit the qualities of precision and uniformity required by Article 2 of the Directive…” In the view of the Court, this type of mark would encompass too many possible combinations and interpretations, and it was impossible to say that a consumer would be able to remember each one so as to repeat with certainty the experience of a purchase. This could be accomplished only if the arrangement of colours in a colour combination mark was systematic, predetermined and uniform.

     

    Comment

    Heidelberger’s claim to protection for its colour combination “in every conceivable form” was anything but systematic, predetermined and uniform. The judgment is likely to result in the Bundespatentgericht upholding the GPTO’s refusal of the application.

    The decision in Heidelberger is in line with the ECJ’s reasoning in Libertel on the requirement that graphic representations of trade marks be clear, precise, self-contained, easily accessible, intelligible, durable and objective. It is vital to commerce that businesses should be able to identify the extent of their own and others’ rights, and the Court is to be applauded for upholding the principle that trade mark rights should have discernible parameters at a time when, on other crucial issues such as identity of marks, the boundaries have been blurred.

    Nevertheless, the narrow question put to the Court in Heidelberger gave no opportunity for reconsidering whether the use of international colour standards, recognised as an acceptable means of graphic representation in Libertel, is itself in line with the criteria of being self-contained, easily accessible and durable. PANTONE codes and the like are specialist tools for the printing industry, and as such they change over time and can be understood only by reference to corresponding colour guides. The apparent finding of fact in Libertel that such standards meet the relevant criteria is therefore built on shifting sands. Moreover, it is difficult to reconcile the finding in Heidelberger that a colour combination that is not spatially delimited cannot be registrable with the finding in Libertel that a single colour, not spatially delimited, can.

    Given the almost limitless ways in which colours are used on packaging, products and in corporate livery, there is almost infinite scope for infringement of non-spatially delimited rights. Although Heidelberger is helpful, until the ECJ resolves the issue of how single colour marks should also be defined, uncertainty and inconsistency are likely to prevail in assessing the extent of infringement rights and in determining how all types of colour marks should be depicted when applying for new protection. It is not easy to imagine what type of shape or contour would meet the Heidelberger test, particularly where colour combinations are used and function as trade marks in a variety of different forms. A future visit to the ECJ to establish just how specific a spatial restriction must be is likely.

    Heidelberger, like Libertel, is likely to have an immediate impact on pending trade mark applications and existing rights. Pending applications for colour combinations not delimited by form or contour are likely now to be refused, and it may not be possible to avoid this outcome by adding a spatial restriction. In the U.K. at least, such a restriction may be regarded as a non-permissible post-filing amendment to the mark.

    The decision in Heidelberger also casts a long shadow over the presumed validity of existing registrations for non-delimited colour combinations in Europe. Although each case has to be considered on its merits, owners of such rights are likely now to approach their enforcement with some trepidation.