The matter at hand
This matter concerns the validity of two trade mark registrations in the name of Red Bull, each consisting of a colour combination mark represented by two vertical parallel blocks, one in the colour blue and the other in the colour silver, set side by side and of equal surface. Both trade marks had been registered on the basis of acquired distinctive character, the first specifying that ‘protection is claimed for the colours blue (RAL 5002) and silver (RAL 9006)’ and that ‘the ratio of the colours is approximately 50%–50%.’, and the second with the colours being given as ‘blue (Pantone 2747C)’ and ‘silver (Pantone 877C)’ and specifying that the two colours are to be applied ‘in equal proportion and juxtaposed to each other’.
The two marks were declared invalid by the Cancellation Division of EUIPO, taking the view that the graphic representation thereof, evaluated in conjunction with the accompanying description, did not satisfy the requirements of precision and durability laid down in Heidelberger Bauchemie (C‑49/02). The First Board of Appeal and the General Court both upheld this decision, after which Red Bull appealed to the ECJ.
The judgment of the ECJ
The ECJ recalls that it held in Heidelberger Bauchemie (C‑49/02) that “a graphic representation of two or more colours, designated in the abstract and without contours, must be systematically arranged in such a way that the colours concerned are associated in a predetermined and uniform way” and that “the mere juxtaposition of two or more colours, without shape or contours, or a reference to two or more colours ‘in every conceivable form’, will not exhibit the qualities of precision and uniformity”. The rationale thereof is that such representations would allow numerous different combinations, which would not allow the competent authorities and economic operators to know the scope of the protection afforded to the proprietor of the trade mark.
Referring to Hartwall (C‑578/17), the ECJ continues that where a registration is accompanied by a verbal description of the trade mark, “that description must serve to clarify the subject matter and scope of the protection sought under trade mark law and (…) cannot (…) give rise to doubts as to the subject matter and scope of that graphic representation” (paragraph 37). The ECJ rules that the General Court correctly applied this case law, by considering that “the mere indication of the ratio of the two colours blue and silver allowed for the arrangement of those colours in numerous different combinations and did not therefore constitute a systematic arrangement associating the colours in a predetermined and uniform way” (paragraph 42). The same applies to the indication that ‘the two colours [would be] applied in equal proportion and juxtaposed to each other’, which the General Court found can take different forms, giving rise to different images or layouts, while still being in equal proportion.
The ECJ holds that, contrary to what Red Bull claims, the requirement of a systematic arrangement associating the colours in a predetermined and uniform way, does not transform colour combination marks into figurative marks, “since that requirement does not mean that the colours must be defined by contours” (paragraph 48).
The ECJ furthermore rules that in this case there has been no breach of the principle of legitimate expectations by EUIPO, as this requires a “positive act on the part of EUIPO of such a kind as to give it precise, unconditional and consistent assurances that the marks at issue were not liable to be declared invalid” (paragraph 81). According to the ECJ, the fact that the examiner of EUIPO sought additional clarifications in respect of the marks at issue and subsequently accepted the registration thereof, does not qualify as such and moreover does not preclude that mark being declared invalid if it was registered in breach of one of the absolute grounds for refusal provided for in Article 7 of Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark.