Date: 29 May 2019
The two cases analysed here explore the importance of trade marking colour combinations.
Back in January 2018, EUIPO’s Second Board of Appeal held that the grey/orange colour trade mark belonging to the German chainsaw manufacturer, Andreas Stihl AG & Co.KG, was invalid:
The case is of interest because it suggests that the Sieckmann Criteria (i.e. that colour mark descriptions need to be clear, precise, self-contained, easily accessible, intelligible and objective) will still be very much applicable in determining the validity of a trade mark.
Why does this matter? Well, the Sieckmann criteria were originally devised to determine the scope of graphic representation of a mark, but the need for graphic representation of a trade mark was swept away by reforms; namely, the EU Trade Mark Regulation 2017/1001 (the 2017 EUTMR), which amended Article 4 of the 2009 version of EUTMR. The EUTMR now states that a sign must be capable of being represented on the register in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor. However, the Sieckmann Criteria are retained in Recital 10 to the EUTMR.
When the proceedings between Andreas Stihl & Giro Travel were heard before the Second Board of Appeal, the 2017 updated version of the EUTMR was not yet in force, and so the Board held that the 2009 version of the EUTMR was applicable. However, the case does suggest that the Sieckmann Criteria will be equally applicable in cases which are dealt with under the new EUTMR going forward.
That decision came only a few months after the EU General Court decided that two of Red Bull’s EUTM registrations for blue/silver colour combination shown below were invalid:
Both the General Court and EUIPO declared Red Bull’s marks invalid for lack of precision. The blue and silver had been described in one registration as being in a ratio of “approximately 50% to 50%” and in the other as being “applied in equal proportion and juxtaposed to each other”.
All three decisions have been appealed. At the time of writing, no dates for the hearings have been set as yet, but we await the outcome of the decisions with great interest.
Continuing with the issue of trade mark registration for colours per se, G & M Safe Deck Limited (designers, suppliers, installers, and testers of fall protection solutions to the UK construction industry) applied to register a pure colour mark in the UK for “safety platform decking made of high-density polyethylene (HDPE), all for use in the house building industry” in Class 19 (UKTM application number 3173211; see UKIPO decision O-433-18).
The G&M Safe Deck product incorporates orange panels with orange rectangular shaped legs, as shown below:
J. Mac Safety Systems Limited’s Macdesk product incorporates orange and red panels with black rectangular shaped legs, as shown below:
J. Mac Safety Systems Limited opposed G & M Safe Deck Limited’s application, claiming that the use of the mark over a period of barely five years was insufficient to educate the average consumer that the colour orange (Pantone 1595C) had acquired a secondary meaning as a trade mark and, therefore, it was devoid of distinctive character and should be refused registration under section 3(1)(b).
The Hearing Officer said that there was no hard and fast rule about the length of time and this was merely one element of a multi factor assessment. “Clearly, if the applicant could rely upon decades of use then this would be advantageous, however it is plausible for five years to be a sufficient period of time”. Further, a period of five years did not greatly assist or hinder G & M Safe Deck Limited with its claim, and it was most certainly not detrimental to the extent that J. Mac Safety Systems Limited argued.
The evidence submitted demonstrated that third parties used colours other than orange for party safety platform decking. G & M Safe Deck Limited argued that the use of colour to distinguish between manufacturers had become common practice in the construction industry for safety decking and customers were accustomed to viewing the colour orange as indicating trade origin. However, the evidence wasn’t presented in witness statement format and, therefore, was hearsay.
G & M Safe Deck Limited’s alleged turnover from the rental and sale of safety platform decking between 2011 and 2017 was £2.9m. The evidence included a selection of sales invoices and evidence of G & M Safe Deck Limited’s share of the UK safety platform decking market. In terms of advertising and marketing, G & M Safe Deck Limited spent a very low amount as they predominantly relied on word of mouth recommendations. They provided a small number of marketing communications, an extensive list (in the few hundreds) of companies targeted for marketing purposes and a sales brochure, which contained the following statement:
However, the hearing officer noted that the above statement suggested that the colour served a technical purpose rather than denoting trade origin. Also, it was not clear how many brochures were issued, to whom or where. Further, the hearing officer said that “the sales do appear to be steadily increasing but they are not striking, particularly in light of competitor figures”.
Unfortunately for the UKTM applicant, J. Mac Safety Systems Limited’s evidence showed that its turnover for one quarter was greater than G & M Safe Deck Limited’s annual turnover. The hearing officer thought G & M Safe Deck Limited’s market share of between 5 and 8% was reasonable, but its only real advertising spend – maintaining a website at a cost of around £200 per year – was very low, and did not assist its claim to having acquired a distinctive character.
Although the hearing officer concluded that G & M Safe Deck Limited had established that some of its customers, competitors and the current trade body recognised the colour orange to be associated with it when used on the applied for goods, much of that evidence appeared to have been solicited for the proceedings.
In view of the above, the hearing officer found that G & M Safe Deck Limited had not established its claim to acquired distinctiveness and, therefore, the objection under section 3(1)(b) of the Act was maintained.
This decision highlights the difficulty faced by applicants for colour trade marks, given the general interest in not unreasonably restricting competitor’s access to the use of colours. In essence, successful registration of a pure colour as a trade mark depends on whether the public associate that particular shade of colour with the goods or services for which registration is sought. It also shows the importance of testing robustly to ascertain the quality of evidence; otherwise, it can result in the acceptance of a mark that should have been rejected. As the hearing officer acknowledged, his decision differed from that made by a different hearing officer and he appreciated that “this may be frustrating for the applicant”. However, he pointed out that he had had the benefit of evidence and submissions from the opponent (which included evidence illustrating that third parties used red, orange and other colours in relation to safety platforms). As noted by the hearing officer, filing hearsay evidence inherently comes with the risk that such evidence might be given little weight or dismissed entirely. In this particular case, an aspect which affected the weight of the evidence was that all of the emails and letters had been solicited for these proceedings.