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All sorts of colours and shapes: a summary of non-traditional marks

Date: 21 May 2018

 

Case reference

Application

Summary

(European) General Court

 

Joined Cases T-101/15 and T-102/15

 

Red Bull v EUIPO

 

30 November 2017

EUTM (colour mark)

 

 

- energy drinks (32)

 

Protection is claimed for the colours blue (RAL 5002) and silver (RAL 9006).The ratio of the colours is approximately 50% - 50%.

 

EUTM (colour mark)

 

 

- energy drinks (32)

 

The two colours will be applied in equal proportion and juxtaposed to each other.  Blue (Pantone 2747C), silver (Pantone 877C).

The (European) General Court held that neither of Red Bull’s registrations for blue/silver colour combination trade marks were valid.  The marks at issue were registered on the basis of acquired distinctive character through use.  

   However, in 2011, Optimum Mark sp. z o.o. requested that both Red Bull trade marks be declared invalid.  This request was granted by the EUIPO’s Cancellation Division, Red Bull’s appeal was dismissed by the First Board of Appeal and now the General Court has upheld the previous decisions.

   The General Court found the Red Bull marks to be invalid because they do not fit the requirements of a trade mark. 

   In essence, the Court’s reasoning was that “the mere indication of the ratio of the two colours blue and silver” which “allowed for the arrangement of those colours in numerous different combinations” did not “therefore constitute a systematic arrangement associating the colours in a predetermined and uniform way, producing a very different overall impression and preventing consumers from repeating with certainty a purchase experience.”  

   The Red Bull decision was based on the old EU trade mark law (before the requirement for graphic representation was removed) but, as the Court highlighted, the new law is more restrictive than the previous wording, insofar as it expressly incorporates the objectives identified in Sieckmann (a sign must be clear, precise, self-contained, easily accessible, intelligible, durable and objective).  This surprised many people, who thought that the new wording had been intended to liberalise EU trade mark law.

Opinion of Advocate General Szpunar

 

Case C-163/16

 

Christian Louboutin v Van Haren Schoenen BV

 

6 February 2018

Benelux trade mark (colour mark)

 

 

 

- high-heeled shoes (other than orthopaedic footwear) (25)

 

The trade mark is described as consisting “of the colour red (Pantone 18 1663TP) applied to the sole of a shoe as shown (the contour of the shoe is not part of the trade mark but is intended to show the positioning of the mark)”.

 

Advocate General Szpunar has given a second opinion on the classification and potential invalidity of high end shoe designer Christian Louboutin's red sole trade mark.

    In his first opinion, he expressed the view that the mark should be classified as "a mark consisting of the shape of the goods and seeking protection for a colour in relation to that shape" rather than a mark consisting of a colour per se (i.e. a colour mark). Accordingly, he found that Louboutin's trade mark potentially falls in the absolute ground for refusal or invalidity contained in Article 3(1)(e)(iii) of the of the Trade Marks Directive (2008/95/EC), which prohibits the registration of shapes giving substantial value to the goods.

   In his second opinion the Advocate General maintains that view, finding that the introduction of the concept of a "position mark" under the Implementing Regulation (2017/1431/EU) has no bearing on the applicability of that prohibition.

  However, the good news for Louboutin is that the Advocate General also maintains his view that the concept of shape which "gives substantial value" relates only to the intrinsic value of the shape and not to the reputation of the mark or its owner.

   An Advocate General's opinion, even a second one, is far from determinative. Even if the CJEU agrees with his every point it is for the national court to decide whether the colour red on the sole of a shoe really does give it substantial value without taking into account Louboutin's reputation. And Louboutin's position, of course, is that, if anything, it is Louboutin's reputation that makes the red colour on the soles of their shoes an element that gives them substantial value.

(European) General Court

 

Cases T-404/16 and T-418/16

 

Galletas Gullón SA v EUIPO

 

23 October 2017

EUTM (figurative mark)

 

 

 

- Biscuits (30)

 

Registration sought for three-dimensional sign (reproduced above) for which the colours blue, green, red, white, yellow and black were claimed

 

EUTM (figurative mark)

 

 

 

- Biscuits (30)

 

Registration sought for three-dimensional sign (reproduced above) for which the colours red, green, white, yellow, brown, black and beige were claimed

 

In two separate judgments, the (European) General Court has annulled two EUIPO Board of Appeal decisions which revoked for lack of genuine use a Spanish biscuit manufacturer's 3D EUTMs consisting of the packaging of a packet of biscuits in differing colour schemes and featuring the word "O2".

   Although there were differences between Galletas Gullón's EUTMs as registered and as used, the General Court found that those differences did not alter the distinctive character of those marks as registered. As such, Galletas Gullón's use of its EUTMs constituted use within the meaning of Article 15(1)(a) of the EU Trade Mark Regulation (207/2009/EC) (now 18(1)(a) of the new EU Trade Mark Regulation (2017/1001/EU)).

   Furthermore, contrary to the Board's finding, the evidence showed that Galletas Gullón had put its two EUTMs to genuine use during the relevant five-year period within the meaning of Article 51(1)(a) (now Article 58(1)(a)).

The Court of Justice of the European Union

 

Case C-417/16

 

P August Storck KG v EUIPO

 

4 May 2017

International trade mark designating the EU (figurative mark)

 

 

 

Figurative sign (reproduced above), representing the shape of a white, grey and blue square-shaped packet.

 

- Confectionery, chocolate, chocolate products, pastries, ice-creams, preparations for making the aforementioned products, included in this class (30)

The Court of Justice of the European Union has upheld the General Court's decision that a 2D shape mark, namely a figurative sign representing the shape of a square packaging featuring white and grey edges and a combination of the colours white and blue, was devoid of distinctive character pursuant to Article 7(1)(b) of the EU Trade Mark Regulation (207/2009/EC).

    According to the CJEU, when assessing the distinctive character of a 2D or 3D shape mark consisting of the appearance of the product which it designates for the purposes of Article 7(1)(b), it is necessary to determine whether that mark departs significantly from the standard or customs of the sector. That standard applies even when a 2D or 3D shape mark contains a figurative element.

Opinion of Advocate General Wathelet

 

Joined Cases C-84/17 P, C-85/17 P and C-95/17

 

Appeals brought by Nestlé, EUIPO and Mondelez

 

19 April 2018

EUTM (3D mark)

 

 

 

- Sweets; bakery products, pastries, biscuits; cakes, waffles (30)

In this 16-year dispute between Swiss confectionary giant Nestlé and rival Mondelez, the owner of Cadbury, the Advocate General has said that the CJEU should dismiss both parties’ appeals against the (European) General Court’s decision to annul the EUIPO’s decision to grant Nestlé a trade mark for the “four-fingered” Kit Kat.

   Mondelez complained that the General Court found that the mark at issue had acquired distinctive character through use in Denmark, Germany, Spain, France, Italy, the Netherlands, Austria, Finland, Sweden, and the UK.  The Advocate General said this complaint was “manifestly inadmissible and must be dismissed”. 

   However, the  Advocate  General also said that account  must  be  taken  of  the  geographical  size  and  the distribution of the regions in which acquired distinctive character has been established.  He noted that, although Nestlé provided market research for the majority of the Member States (apart from Luxembourg), it was clear from the previous judgment that the information provided was not sufficient to establish that the relevant public in those countries identified Nestlé as the commercial origin of the product covered by the trade mark at issue.

(European) General Court

 

Case T-36/16

 

Enercon GmbH v EUIPO

 

3 May 2017

EUTM (colour mark)

 

 

 

- Wind energy converters, and parts therefor (7)

In a dispute between rival wind energy manufacturers, the General Court has found that Enercon's EUTM, which was composed of white and of five shades of green, was devoid of distinctive character within the meaning of Article 7(1)(b) of the EU Trade Mark Regulation (207/2009/EC) and therefore invalid.

  While the judicial history of this dispute indicates there was some confusion over whether Enercon's EUTM was a colour mark or a 2D shape mark composed of colours, the General Court has since clarified that what you tick on the application for registration is what you get.  Accordingly, since Enercon identified its mark as a "colour mark" in its application, its mark could not later be re-categorised as a 2D shape mark and the distinctive character of its mark had to be assessed as a colour mark.

   The problem with colour marks is that although colours can trigger certain associations and feelings, they possess little inherent capacity for communicating specific information, especially since, on account of their appeal, they are commonly and widely used to advertise and market goods and services without any specific message.  Though Enercon's mark contained five different shades of the colour green along with the colour white, its choice of green was nevertheless problematic since that specific colour is often associated with being environmentally friendly and wind power is a form of renewable, clean energy. As such, the relevant public was unlikely to perceive the various shades of green in Enercon's mark as an indication of commercial origin.

   The case draws attention to the important role that categorising the mark in the application for registration plays in the assessment of distinctiveness.   According to the General Court, distinctiveness should be assessed based on the category selected by the applicant in the application for registration and not on all potentially relevant categories as perceived by the relevant public.

(European) General Court

 

Case T-291/16

 

Anta (China) Co Ltd v EUIPO

 

5 April 2017

EUTM (figurative mark)

 

 

 

– various goods in classes 18, 25 and 28

The (European) General Court upheld a EUIPO Board of Appeal decision that a figurative sign consisting of lines of irregular width intersecting at an acute angle lacked distinctive character and was therefore not registrable as an EU trade mark for clothing, games and leather goods.  The court agreed with the Board that the relevant public, which could not be presumed to be particularly critical in their analysis of these types of goods, would perceive the sign as "an ordinary decorative element".

(European) General Court

 

Case T-44/16

 

Novartis v EUIPO

 

31 January 2018

EUTM (figurative mark)

 

 

 

 

- Pharmaceutical preparations for the treatment of dementia of the Alzheimer’s type (5)

 

 

 

 

 

 

In dismissing the appeal filed by Novartis, the (European) General Court ruled than an overall assessment of the mark was not necessary as all the essential characteristics of the mark served a technical result.

   The essential characteristics of the contested mark were: (i) the square shape of the protective line; (ii) the overlapping protective plastic layer, represented by the white stripe in the background of the mark; (ii) the circular area in eh centre; and (iv) the arrangement of knobs around the central circular area.

   In the Court’s view, the Board had correctly found that the square shape of the protective liner had a technical function by facilitating the packaging and storage of the transdermal patches in rectangular cardboard boxes (the type most commonly used for packaging and storage in the medical field).  The overlapping protective plastic layer allowed easy application of the patch and the circular shape of the patch ensured that it fixed to the skin.  Novartis failed to show that the arrangement of the knobs around the circular area was decorative or imaginative but rather merely followed the round, functional shape of the patch.

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